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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/14/2026 has been entered.
Prior Art Not Relied Upon
The prior art made of record on the PTO-892 attached to the previous 2/18/2026 Office Action and not relied upon in the rejections below are considered pertinent the issue of establishing that a broad control device genus encompasses computer/algorithm control device species and/or mechanical control device 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
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 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 “controller” (line 9 of claim 1) that is modified by numerous functions (see bullets below) without sufficient algorithm to perform the functions. Note that the claimed controller structures of “a processor… a memory… a control program…” are insufficient to perform the functions without an algorithm. Note that none of the claimed phrases “controller”, “processor”, “memory” or “control program” exist in the written description. Accordingly, it is unclear whether 112(f) is invoked and if so what hardware and algorithm, if any, are to be incorporated into the claim from the written description. The claim 1 controller functions are as follows:
“configured to store a control program” (lines 9-10 of claim 1),
“calculates a difference between a target value of a position of each of the plurality of joints and the amount of displacement of a corresponding one of the plurality of joints detected by a corresponding one of the plurality of displacement amount detectors” (line 19-22 of claim 1),
“determines the discharge capacity of the hydraulic pump based on the difference calculated” (lines 22-23 of claim 1),
“controls at least one of the operation of the electric motor and the discharge capacity of the hydraulic pump according to the determined discharge capacity” (lines 23-25 of claim 1).
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.
Firstly, the newly added claim 1 limitations “a controller”, “a processor”, “a memory” and “a control program” were not originally recited and thus constitute new matter. Note that the new phraseology “a controller” is not synonymous with the originally disclosed “control device”, nor was the original “control device” disclosed to have a processor or memory as newly claimed. Note that the newly added “a control program” is not synonymous with the originally disclosed “movement plan” or “program”.
Secondly, 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, reduction to detailed drawings and/or reduction to detailed written description. The written description does not disclose any algorithm sufficient to perform the claimed functions, much less the multiplicity necessary to establish possession of the full broad scope of the claimed genus of functions. For example, the claim 1 limitation “determines the discharge capacity of the hydraulic pump based on the difference calculated” (lines 22-23 of claim 1) broadly encompasses any and all possible manners of basing the determination of capacity on the difference calculated, whereas applicant fails to disclose even one such algorithm for basing as claimed, much less the multiplicity necessary to establish possession of the full broad scope claimed. As yet another example, the claim 1 limitation “controls at least one of the operation of the electric motor and the discharge capacity of the hydraulic pump according to the determined discharge capacity” (lines 23-25 of claim 1) lacks any disclosed algorithmic species of any particular manner of controlling the motor/pump “according” to the determined discharge capacity (e.g., no disclosure of any correlation of particular motor or pump attributes [no specific power, speed, cycling, torque, etc.] “according to” any particular list or table of determined capacities). 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…”
See also 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.
The newly added claim 1 limitations “a controller that includes a processor and a memory configured to store a control program” was not originally disclosed nor is the limitation currently described or depicted, such that it is unclear what, if any, structures of applicant’s originally disclosed invention are required to meet these limitations. For purposes of applying the prior art elsewhere below the examiner takes any control device to meet these limitations since applicant’s original disclosure sets forth only a “control device” without any express mentions of “a controller”, “a processor”, “a memory” or “a control program”.
As detailed in the “Claim Interpretation” section above (incorporated herein by reference) it is unclear whether or not 35 USC 112(f) is invoked by claim 1. The claim recites a generic place holder “controller” and numerous functions thereafter. However, the disclosure fails to set forth any algorithm sufficient to perform the 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 “determines the discharge capacity of the hydraulic pump based on the difference calculated” (lines 22-23 of claim 1) is unclear as to what manner the limitation is to be “based on”, e.g., in what manner does a difference correlate to the capacity? Would doing nothing to the capacity regardless of the difference calculated suffice? The claim limitation is substantially infinitely broad in scope and thus largely non-limiting and unclear.
The claim 1 limitation “controls at least one of the operation of the electric motor and the discharge capacity of the hydraulic pump according to the determined discharge capacity” (lines 23-25 of claim 1) is unclear as to what manner the limitation is to be “according to”, e.g., in what manner does any particular capacity correlate to any particular manner of operation of the motor? Would leaving the motor turned off for all possible capacities suffice? The claim limitation is substantially infinitely broad in scope and thus largely non-limiting and unclear.
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.
Modification: The Riskas pump (64) 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). The resulting modification would map to the claims as follows:
Claim 1 (as best understood, see 35 USC 112 rejections).1 Riskas discloses 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 plurality of displacement amount detectors (see written descriptions of position transducers and sensors) that are provided in a one-to-one correspondence with the plurality of joints of the manipulator and each detect an amount of displacement of a corresponding one of the plurality of joints; and a controller (one or more of 113, 120, 122, 132, 138) that includes a processor and a memory (113, 120, 122, 132, 138, include a processor/memory in as much as applicant’s own originally disclosed invention does as best understood, see 35 USC 112(a) and 112(b) rejections) configured to store a control program and is 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 (Riskas 64 modified to be variable type as taught by Tanaka, in modification paragraph above) 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 controller calculates a difference between a target value of a position of each of the plurality of joints and the amount of displacement of corresponding one of the plurality of joints detected by a corresponding one of the plurality of displacement amount detectors, determines the discharge capacity of the hydraulic pump based on the difference calculated, and controls at least one of the operation of the electric motor and the discharge capacity of the hydraulic pump according to the determined discharge capacity.
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.
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 newly amended remain non-possessed under 35 U.S.C. 112(a) and unclear under 35 U.S.C. 112(b), as is detailed in the reworded rejections above.
Applicant argues that Riskas fails to disclose the claim 1 function “the controller calculates a difference between a target value of a position of each of the plurality of joints and the amount of the displacement of a corresponding one of the plurality of joints detected by a corresponding one of the plurality of displacement amount detectors, determines the discharge capacity of the hydraulic pump based on the difference calculated, and controls at least one of the operation of the electric motor and the discharge capacity of the hydraulic pump according to the determined discharge capacity.” This is not persuasive. Applicant fails to disclose any particular “calculates” algorithm, “determines” algorithm, “based on” algorithm, “controls” algorithm, or “operation” algorithm such that the claim limitation is not possessed under 35 USC 112(a) and is unclear as to what algorithms, if any, are to limit the claim under 35 USC 112(b). The claimed functions being infinitely broad/unclear are presumed to be inherently capable of being performed by the prior art structures (bolded in the rejections above), in at least as much as applicant’s own originally disclosed structural elements are, in accordance with MPEP 2112.01 and 2114.
Applicant argues that the Riskas pump is not variable-capacity and thus cannot have its capacity controlled. This is not persuasive. Firstly, the claim does not specify any specific algorithm or manner of controlling and thus does not expressly forbid controlling to maintain a constant capacity. Secondly, the rejection actually set forth is not one of anticipation but rather relies on obvious modification of the Riskas pump to be variable capacity as taught by Tanaka. 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 or pump operation (turning on, turning off, speeding up, slowing, maintaining speed, maintaining off, increasing capacity, decreasing capacity, keeping capacity constant, etc.) such that any manner of operation would read thereon such as operating the motor or pump 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 pump teachings. 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 inherently met by the prior art as best understood, in accordance with MPEP 2112.01 and 2114.
Applicant argues that Riskas fails to disclose the claim 1 plurality of displacement amount detectors as required by claim 1 and thus is not capable of performing the functions related thereto. This is not persuasive. Riskas discloses a plurality of displacement amount detectors (see written descriptions of position transducers and sensors and elements 82a-e). Applicant’s claims fail to expressly recite any structural feature of the detectors that is lacking in the prior art. Nor are the claims limited to any particular algorithm related to the detectors such that the functions are nearly infinitely broad and unclear. Accordingly, Riskas is inherently capable of performing the functions in accordance with MPEP 2112.01 and 2114.
Conclusion
All claims are patentably indistinct from claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction between the current and previous versions would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 mailing 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
1 As noted in the 35 USC 112 rejections elsewhere above, a great deal of confusion and uncertainty exists as to the proper interpretation of numerous claim limitations. In the interest of compact prosecution, the examiner has applied the prior art under 35 U.S.C. 103 in as best as the claims can be understood. However, in accordance with MPEP § 2173, overly detailed mapping of the art to each and every claim limitation as currently written would be improper since such would require undue speculation as to the intended meaning/scope thereof. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962).
Prosecution Insights