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 Amendment
This Final Office action is responsive to the communication filed under 37 C.F.R. § 1.111 on November 7, 2025 (hereafter “Response”). The amendments to the claims are acknowledged and have been entered.
Claims 1–4 and 6 are now amended.
New claims 7 and 8 are now added.
Claims 1–8 are pending in the application.
Response to Arguments
Claim(s) 1–8 stand rejected under 35 U.S.C. § 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2022/0251806 A1 (“Otoh”), as well as under 35 U.S.C. § 102(a)(1) as being anticipated by International PCT Publication No. WO 2021/85608 A1, with US 2022/0251806 A1 serving as the translation document. The Applicant’s remarks have been considered in light of the amendment, but do not persuade the Examiner to withdraw the rejection.
The Applicant argues that the amended cautionary note differs from Otoh’s confirmation screen because it “includes a designated status for the designated work machine diagnosis for at least one of the actual machine input interface and the actual machine output interface,” while Otoh’s confirmation screen, in the Applicant’s opinion, “is a confirmation screen prompting the user to check for obstacles around the excavator.” (Response 12). The Examiner respectfully disagrees.
Otoh discloses that its confirmation screen displays more than merely a prompt. According to Otoh, the confirmation screen may also “display [a] detection result by the object detecting device S8 included in the excavator 100.” Otoh ¶ 158. Object detecting device S8 is one of among several input and output interfaces S1–S8 installed on the excavator 100, see Ohot ¶¶ 41, 49, and 50, thus meeting the additional limitation that the designated status in the cautionary note is “for at least one of the actual machine input interface and the actual machine output interface.”
For these reasons, claims 1–8 stand rejected under 35 U.S.C. § 102, and the Applicant’s request for a withdrawal of the rejection (Response 13) is respectfully denied.
Claim Objections
The amendment to claim 6 inserts the word “a” in the wrong position—between cautionary and note, where it should instead precede the whole phrase, i.e., “a step of causing a cautionary [[a]] note”.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1–8 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2022/0251806 A1 (“Otoh”).
Claim(s) 1–8 are also rejected under 35 U.S.C. § 102(a)(1) as being anticipated by International PCT Publication No. WO 2021/85608 A1, with US 2022/0251806 A1 serving as the translation document. The findings for both rejections are provided together using the US Otoh reference below.
Claim 1
Otoh discloses:
An actual machine diagnosis system comprising:
Otoh’s disclosure includes a “mobile terminal 200,” illustrated in FIGs. 4 and 5 (among others). Otoh ¶¶ 114 and 125.
a non-transitory storage device which retains computer-executable instructions for diagnosing a designated work machine; and a processor which executes the computer-executable instructions to perform a diagnosis of the designated work machine,
A “program” is “stored in [a] memory device 205” of mobile terminal 200 “to implement various processes as described below.” Otoh ¶ 122. One such process “stored in the memory device 205” and “described below” is the process shown in FIG. 6, which will be the focus of this rejection. See Otoh ¶ 133.
wherein the processor causes a cautionary note regarding the designated diagnostic item of a designated work machine designated through an input interface of a terminal device to be output to an output interface of the terminal device,
“[I]n step S613, the mobile terminal 200 displays, on the display device 202 by the display control part 230, a confirmation screen for prompting to confirm the presence or absence of an obstacle around [an] excavator 100.” Otoh ¶ 158.
The confirmation screen is a “note regarding a designated diagnostic item of a designated work machine” within the meaning of claim 1, because it describes a prerequisite for an excavator 100 that was designated in step S603 (Otoh ¶ 138) to perform a diagnostic operation that is designated in step S615 (Otoh ¶ 160).
wherein the cautionary note contains at least one designated status for the diagnosis from among actual machine input and output interfaces installed on the designated work machine,
“Note that the confirmation screen may display the detection result by the object detecting device S8 included in the excavator 100.” Otoh ¶ 158. Object detecting device S8 is one of among several input and output interfaces S1–S8 installed on the excavator 100. See Ohot ¶¶ 41, 49, and 50.
the processor further causes the terminal device to transmit an external request signal regarding the designated diagnostic item to an actual machine communication station mounted on the designated work machine on condition that the cautionary note is confirmed through the input interface of the terminal device
The stored program includes further instructions S615, S616, and S605 that the mobile terminal 200 performs on the condition that step S614 resolves as YES. Importantly, the condition of step S614 is the exactly same as the claimed condition, and either one of the signals transmitted in S616 or S605 (or both) fall within the scope of the claimed external request signal:
“In step S614, when a corresponding operation is received, the mobile terminal 200 displays a list screen indicating a list of the operations of the excavator 100 on the display device 202 by the display control part 230 (step S615) . . . . Subsequently, when an operation of selecting an operation is received by the input receiving part 210, the mobile terminal 200 transmits a start instruction of the selected operation to the excavator 100 by the communication control part 220 (step S616) and proceeds to step S605,” Otoh ¶ 161, where “the mobile terminal 200 transmits a request signal requesting to acquire the operation data (the state quantity information) to the excavator 100 by the communication control part 220.” Otoh ¶ 144. A “receiving device S2” is indeed mounted on the excavator 100 in order to receive those transmissions. See Otoh FIG. 1.
and causes the terminal device to receive from the actual machine communication station an external response signal representing information regarding a designated component in accordance with the designated diagnostic item among components of the designated work machine,
In step S607, “the mobile terminal 200 receives operation data including setting condition information from the excavator 100.” Otoh ¶ 147. “The excavator 100 continuously transmits the detection value as the state quantity information to the mobile terminal 200 at constant time intervals by a plurality of sensors. That is, the transmission control part 33 of the excavator 100 transmits the state quantity information including the detection value of a plurality of sensors to the mobile terminal 200 in real time.” Otoh ¶ 148.
and the processor further causes information regarding the designated component represented by the external response signal received by the terminal device to be output to the output interface of the terminal device.
“A screen 121A illustrated in FIG. 13 is an example of a recording screen while recording a video,” i.e., as part of the instructions in step S607. “In the display area 123A, the operation data including the state quantity information is received upon the start of recording the video, and, therefore, a waveform representing the value of an item is displayed for each item of the state quantity information.” Otoh ¶ 203.
Claim 2
Otoh discloses the actual machine diagnosis system according to claim 1,
wherein the first functional element causes the cautionary note in accordance with a designated attribute regarding the designated work machine designated through the input interface of the terminal device in addition to the designated diagnostic item to be output to the output interface of the terminal device.
As shown in FIG. 6, step S613 of displaying the confirmation screen is performed in accordance with a user input received at step S604, wherein “a selection screen [is displayed] on the display device 202, which prompts a selection of causing the excavator 100 to operate according to operations by an operator, or causing the excavator 100 to operate in an unmanned state without the operator riding the excavator 100.” Otoh ¶ 141. In other words, the claimed “attribute” in Otoh’s disclosure is the presence or absence of a human operator within the excavator 100, and that attribute is designated via the screen on terminal 200.
Claim 3
Otoh discloses the actual machine diagnosis system according to claim 2,
wherein the second functional element causes the cautionary note in accordance with the designated attribute designated through the input interface of the terminal device to be output to the output interface of the terminal device for a designated attribute item including an internal cause attribute item regarding an internal situation of the designated work machine and an external cause attribute item regarding an external situation of the designated work machine in addition to the designated diagnostic item.
“A message is displayed in the display area 102 to prompt a user of the mobile terminal 200 to confirm the presence or absence of an obstacle around the excavator 100. When an unmanned operation is selected, the mobile terminal 200 according to the present embodiment may transmit a request for acquiring the detection result obtained by the object detecting device S8 to the excavator 100 and display a message based on the detection result in the display area 102.” Otoh ¶ 178.
It should be understood that in this rejection, the claimed “internal cause attribute item” corresponds to the presence or absence of a human operator in the excavator 100, while the claimed “external cause attribute item” corresponds to the presence or absence of an obstacle in the surrounding area.
Claim 4
Otoh discloses the actual machine diagnosis system according to claim 2,
wherein the first functional element causes a selection menu for allowing selection of one option as the designated attribute among attributes that are a plurality of options through the input interface of the terminal device to be output to the output interface of the terminal device for at least one designated attribute item.
“A screen 111 illustrated in FIG. 11 is an example of a list screen of a list of the operations of the excavator 100 in the unmanned operation.” Otoh ¶ 181. “The screen 111 includes a display area 112 and an operation button 113. In the display area 112, a prescribed operation name and a selection field associated with each of the prescribed operation names are displayed as a list of the operations performed by the excavator 100.” Otoh ¶ 182.
Claim 5
Otoh discloses
An actual machine diagnosis compound system including the actual machine diagnosis system according to claim 1 and the actual machine communication station,
“FIG. 1 is a schematic diagram illustrating an example of a configuration of an excavator management system according to an embodiment . . . . The excavator management system SYS includes an excavator 100 and the mobile terminal 200.” Otoh ¶ 36.
The claimed “actual machine diagnosis system according to claim 1” is mapped to the mobile terminal 200 for the reasons given in the rejection of claim 1.
The claimed “actual machine communication station” may be mapped to the entire excavator 100, or simply to the controller 30 on board the excavator 100. See Otoh ¶ 60 and FIG. 2. This rejection will focus on the latter mapping, particularly the discussion of the computer programs 31–33 stored and executed on the controller 30. See Otoh ¶ 97.
wherein the actual machine communication station receives the external request signal from the actual machine diagnosis system,
“The reception control part 32 receives a request signal (a request signal for requesting transmission of the state quantity information) transmitted from the mobile terminal 200 through wireless communication with the mobile terminal 200 by the receiving device S2.” Otoh ¶ 100.
generates an internal request signal by converting a format of the external request signal,
“[W]hen automatic control of the excavator 100 is performed, the controller 30 generates . . . a boom raising operation signal (electric signal) or a boom lowering operation signal (electric signal) based on a set program or the like.” Otoh ¶ 109. Note that the boom raising and lowering operations are just two examples, others are shown in FIG. 11.
transmits the internal request signal to a designated control unit mounted on the designated work machine for controlling operation of the designated component through an actual machine communication network mounted on the designated work machine,
After generating the appropriate signal, the controller 30 outputs the generated signal. For instance, in the boom raising/lowering example, “the controller 30 generates and outputs a boom raising operation signal (electric signal) or a boom lowering operation signal (electric signal) based on a set program or the like.” Otoh ¶ 109. The controller 30 outputs these signals to the components they are meant to control. For instance, continuing with the boom raising/lowering example, “the opening degree of [a] proportional valve 31AR is controlled in accordance with a boom-lowering operation signal (an electric signal) which is a control signal from the controller 30,” and likewise for a corresponding proportional valve 31AL, as shown in FIG. 3. Otoh ¶ 107.
receives an internal response signal in response to the internal request signal from the designated control unit through the actual machine communication network,
For any operation performed by the excavator 100 (whether requested manually or remotely), there are several different sensors (e.g., pressure sensors 28L, 28R, 29LA, 29LB, 29RA, 29RB, 29DL, and 29DR) that measure the performance of the equipment responsible for that operation, and that output a respective “detection value” to the controller 30. Otoh ¶¶ 87–89 (referring to FIG. 2). “The acquiring part 31 acquires the detection value of each of the plurality of sensors of the excavator 100 as the state quantity information representing the state quantity of the excavator 100.” Otoh ¶ 98.
generates the external response signal by converting a format of the internal response signal, and transmits the external response signal to the actual machine diagnosis system in accordance with a designated communication format.
Before the controller 30 transmits a response back to the mobile terminal 200, the acquiring part 31 further acquires “setting condition information representing various setting conditions set for the excavator 100 and information representing the machine number for identifying the excavator 100,” Otoh ¶ 99, so that in at least one embodiment, “the mobile terminal 200 receives operation data including setting condition information from the excavator 100.” Otoh ¶ 147.
Claim 6
Claim 6 is directed to exactly the same method that the system of claim 1 performs as part of its normal operation. Therefore, claim 6 is rejected over the same findings and rationale as provided above for claim 1. See MPEP § 2112.02.
Claim 7
Claim 7 includes two elements: (1) everything recited in parent claim 1, and (2), additional descriptions, in the cautionary note, “that at least one of a switch constituting the actual machine input interface and an actual machine control lever need to be in the designated status, and that a value of a meter constituting the actual machine output interface is within a designated range.”
Otoh discloses element (1) for all of the reasons given in the rejection of claim 1.
Otoh does not need to disclose element (2) in order to anticipate claim 7, because any difference between Otoh’s confirmation screen and the additional information recited in the cautionary note of claim 7 consists of differences in the message or meaning to a human reader of the cautionary note, also known as printed matter.
“Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art.” MPEP § 2112.02(III.) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)).
With respect to computer inventions, printed matter (also known as “non-functional descriptive material”) fails this test when it is “directed to conveying a message or meaning to a human reader independent of the intended computer system.” MPEP § 2111.05(III.); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (CAFC Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
In this case, the description of the cautionary note in claim 7 is that it “includes descriptions that at least one of a switch constituting the actual machine input interface and an actual machine control lever need to be in the designated status, and that a value of a meter constituting the actual machine output interface is within a designated range.” This message is independent of the intended computer system, because in claim 7, the designated work machine is not the intended computer system, and is not even an element of the claimed actual machine diagnosis system. Indeed, FIG. 1 shows that the actual machine diagnosis system 120 is part of a terminal device 100 that is totally separate from the work machine 200.
Accordingly, since the only difference between a prior art product and the claimed product is the underlying human message or meaning of the non-functional descriptive material within the claimed cautionary note, the content of the printed matter in the cautionary note fails to distinguish the claimed invention from the prior art. MPEP § 2112.02 (subsection III).
Claim 8
The printed matter doctrine discussed in the rejection of claim 7 above “has been extended to method claims in which an instructional limitation is added to a method known in the art.” MPEP § 2111.05. Therefore, claim 8 is rejected for all of the same reasons given above in the rejection of claim 7.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 1.17(a)) pursuant to 37 C.F.R. § 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 Justin R. Blaufeld whose telephone number is (571)272-4372. The examiner can normally be reached M-F 9:00am - 4:00pm ET.
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, James K Trujillo can be reached at (571) 272-3677. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/Primary Examiner, Art Unit 2151