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 .
Copending Applications
The examiner has reviewed the art of record in the copending applications having the following publications: US20240353870, US20240238056, US20240353847, US20240351513 (now US Patent 12246643), US20240353866, US20240353848, US20240351189, US20240353868, US20240353862, US20240353869.
Terminal Disclaimer
The terminal disclaimer filed on 4/16/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of prior U.S. Patent No. 12246643 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-3, 5-7 and 10 set forth limitations that meet the three-prong test set forth in MPEP § 2181 (I) and will be interpreted under 35 U.S.C. 112(f).
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 limitations use a generic placeholder (e.g., “a hardware processor”) 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 limitations are:
“a hardware processor configured to control the first light emitting unit and a second light emitting unit of the mobile robot, wherein in response to a tilting of the stick portion, the hardware processor outputs a control signal for controlling a direction of movement of a mobile robot, in response to the user action causing the stick portion to move in the downward direction, the hardware processor causes switching of the mobile robot between an autonomous travel mode and a user operation mode… in the autonomous travel mode, the first light emitting unit and the second light emitting unit are caused to emit light in different phases…”
The remaining claims also invoke by dependency.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they must be interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (i.e., the control computer/unit 101 implemented by a processor having an integrated circuit, MPU or CPU, working memory, non-volatile storage device, software, etc. as described in para.0029, 0032, 0036, 0060, 0062, 0065, 0066, 0069-0077, 0082, 0088, 0089, 0092, 0099-0103, 0115, 0120, 0127, 0129, 0135 and 0152-0155. However, as detailed in the 35 USC 112 rejections elsewhere below, the disclosure fails to set forth any algorithm capable of performing the claimed functions thus failing to comply with the written description requirement and presenting clarity issues.
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-3, 5-7 and 10 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 recites “the user receives an instruction to operate the mobile robot based on the detected state of the mobile robot by the external environment”.
The “user” encompasses a human being. The examiner suggests rewording the limitation so as not to structurally comprise the user, e.g., --an instruction that is receivable by the user--, etc.
“the detected state of the mobile robot by the external environment” implies/encompasses that the external environment detects the state, thereby constituting a product of nature. See MPEP 2106.04(b). It is noted that dependent claim 5 further specifies that the external environment “includes a server” but the term “includes” is not exclusionary of the natural external environment. The examiner suggests clarifying claim 1 to recite a detector that is not the external environment, e.g., --a server configured to detect a state of the robot--, etc. However, note that such a limitation would require disclosure of a detection hardware and algorithm in order to establish possession (e.g., see 35 USC 112a rejections elsewhere 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, 5-7 and 10 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. More particularly note the following:
The newly amended claim 1 limitation “a hardware processor configured to… in response to tilting of the stick portion, the hardware processor outputs a control signal for controlling a direction of movement of a mobile robot… autonomous travel mode…” was not present in the original application and thus constitutes new matter. The original specification’s only disclosures relating to tilting were “A direction operation can be received when the user tilts the stick portion” (para.0121) and “A direction operation can be received by tilting the stick portion 302…” (para. 0035). Neither original specification recitation expressly stated that the processor, in particular, responds to tilting much less that the processor responds to tilting by outputting a control signal for controlling as claimed. Similarly, of the eleven recitations of “control signal” in the original specification, none are originally and expressly disclosed to be “for controlling a direction of movement of a mobile robot” as claimed.
The claims require “a robot” (line 3 of claim 1), “the hardware processor outputs a control signal for controlling a direction of movement of a mobile robot” (lines 10-12 of claim 1) and the robot having an “autonomous travel mode” (repeatedly throughout claims 1 and 10). These limitations are not supported by a reduction to practice or sufficient description and/or sufficient depiction to establish possession. The specification states “The mobile robot can be controlled for autonomous movement. In the control for autonomous movement, the mobile robot can be autonomously moved using a learning model obtained through machine learning” (para.0006 of original specification). There is no evidence that applicant actually obtained any such learning model algorithm from machine learning to perform the claimed processor functions. Rather, applicant appears to invite others to do so later. See MPEP 2181 II B.1
The newly added claim 1 limitation “the user receives an instruction to operate the mobile robot based on the detected state of the mobile robot by the external environment” (last lines of claim 1) fails to comply with the written description requirement. Firstly, the disclosure of a user received instruction stipulates that the instruction is provided to the user by a “higher-level management device 2” (see para. 0133, 0141) and that “The control unit 2a can be configured to obtain the state or the travel mode of the mobile robot 100 from an image using a learning model obtained through machine learning when analyzing the light emission pattern and making the determination for the mobile robot 100” (para.0139). There is no evidence that applicant actually obtained any such learning model algorithm from machine learning to perform the claimed functions. Rather, applicant appears to invite others to do so later. See MPEP 2181 II B (previously foot noted). Secondly, while the original specification sets forth a “travel environment”, an “environment camera” and “external communication”, there is no original recitation of the newly claimed “external environment” much less an “external environment” that detects a state of the robot as the current phrasing of the claim implies/encompasses.
The claim 1 limitation “phase relationship” was not present in the original filing and thus constitutes new matter.
The newly added claim 5 limitation “the predetermined light emission pattern is emitted when a communication between the mobile robot and the server is not available” was not expressly recited in the original disclosure and thus constitutes new matter. Note that the claim phraseology is not expressly supported by paragraph [0140] of the specification which merely states “when communication between the mobile robot 100 and the higher-level management device 2 is not possible, the higher-level management device 2 can determine whether the mobile robot 100 is in the autonomous travel mode or the user operation mode or which of the predetermined conditions is met, as presented by the light emission pattern by the mobile robot 100 or the mobile robot 100 and the user terminal device 300 operating the mobile robot 100”. The claim phraseology is not synonymous in scope with the disclosure but rather differs in scope and thus constitutes new matter.
The claim 10 limitation “predetermined light emission pattern” is not present in the original disclosure and thus constitutes new matter in a manner similar to claim 5 above. While the original disclosure sets forth a “light emission pattern” and a “predetermined condition”, the claimed phrase “predetermined light emission pattern” was not expressly/originally disclosed and thus constitutes new matter.
The remaining claims depend from the above and are thus similarly rejected.
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, 5-7 and 10 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.
Claim 1 invokes 35 U.S.C. 112(f). See Claim Interpretation section and 35 USC 112(a) section elsewhere above detailing that the written description fails to disclose the corresponding structure, material, or acts for performing the entirety of the claimed functions and to clearly link the structure, material, or acts to the function, e.g., no algorithm for the claimed autonomous travel mode. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) in accordance with 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). See also MPEP 2181(II)(B) which further regards computer-implemented Means-plus-function limitations.
Claim 1 is unclear as to the whether the two recitations of “a mobile robot” (first in line 3 and then again in line 12) are to refer to a single robot or two distinct robots. See 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 1 recites the limitation “phase relationship” and “different phases” in an unclear manner. The phrase “phase relationship” is not expressly/originally disclosed/described. The only two recitations of “phase” in the disclosure state “the two light emitting units are different in phase” (para.0088) and “to emit light in different phases as a certain light emission pattern” (para.0089). It is unclear how a single pattern can constitute different phases (plural) and the disclosure fails to set forth any other particular manner of phase (e.g., timing, color, brightness, etc.). For purposes of applying the prior art the terms are interpreted broadly to include any manner of phase timing, on/off state, color, brightness, location, etc.
Claim 1 recites that “the first light emission pattern and the second light emission pattern differ from each other by… a synchronization or non-synchronization of light emission between the first light emitting unit and the second light emitting unit” which is unclear as to how a synchronization of the units can be considered to “differ”, the commonly accepted meaning of synchronization being to make the same rather than different.
Claim 5 is unclear as to whether the “server” is to refer to the same element as the previously recited “hardware controller” or to an additional element. The only three recitations of server in the written description (para.00111) lack any reference character shown in the drawings and merely states that the server can be referred to as a higher-level management (elsewhere disclosed as having a processor in para.00115) device and can be a single device or a plurality of devices. See 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)".
The remaining claims depend from the above and are thus similarly unclear/rejected.
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, 5-7 and 10 (as best understood)2 are rejected under 35 U.S.C. 103 as being unpatentable over Gudat US5646845 in view of Hagner US20080252600 and/or Poirier US10000268.
Note that the prior art structures bolded in the claim mappings below are at least inherently capable of performing the claimed functions/properties italicized below in accordance with MPEP §2112.01(I) and MPEP §2114, which state 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 An operation device (fig.45), comprising: a stand (410) that is disposed on (see col.59, ll.59-65) a mobile robot (310), the stand further comprises: a stick portion (“lever” col.57, ll.4-13, and/or joystick 4502/4504 that is on 410) that is disposed on an upper surface portion of the stand, wherein the stick portion is configured to tilt or move in a downward direction in response to a user action; a first light emitting unit (one of the warning lights, e.g., col.57, ll.4-13); a hardware processor (one or more of 4302, 4304, 4306, 4310, 4308, and/or “system”) configured to control (“at the end of the time delay, the system would then give several levels of warning, such as lights”, col.57, ll.4-13) the first light emitting unit and a second light emitting unit (another one of the warning lights, e.g., col.57, ll.4-13) of the mobile robot , wherein, in response to tilting of the stick portion the hardware processor outputs a control signal for controlling a direction of movement of a mobile robot (e.g., “physically moving a switch or lever, for instance, to the autonomous control mode”, e.g., col.55, l.64 – col. 56, l.8); in response to the user action causing the stick portion to move in the downward direction, the hardware processor causes switching of the mobile robot between an autonomous travel mode and a user operation mode, in response to the switching between the autonomous mode and the user operation mode (see written description, e.g., col.57, ll.4-13 and col.55, l.64 – col. 56, l.8), the hardware processor outputs a control signal that causes the first light emitting unit and the second light emitting unit to emit a predetermined light emission pattern (pattern inherent from giving several levels of warning lights for autonomous mode, e.g., col.57, ll.4-13; or off pattern before warning lights) corresponding to the autonomous travel mode or the user operation mode so that a state of the mobile robot is optically detectable by a camera from an external environment, the predetermined light emission pattern includes a first light emission pattern (a first pattern inherent from giving several levels of warning lights for autonomous mode, e.g., col.57, ll.4-13) when the mobile robot is in the autonomous travel mode, and a second light emission pattern (off pattern during manual made that is inherent prior to giving several levels of warning lights to indicate autonomous mode, e.g., col.57, ll.4-13, noting that “pattern” can reasonably be interpreted to include turned off in accordance with para.0077 of applicant’s written description which states that the light emission patterns can include “turned off”) when the mobile robot is in the user operation mode, the first light emission pattern and the second light emission pattern differ from each other by at least one of:
a phase relationship (e.g., on/off phases, location phases, etc.),
a synchronization (e.g., on/on or off/off) or non-synchronization (e.g., on/off) of light emission between the first light emitting unit and the second light emitting unit, and
timing in which the first light emitting unit and the second light are turned on and off (no specific time is claimed such that any time inherently incurred by on and/or off meets the claim),
in the autonomous travel mode, the first light emitting unit and the second light emitting unit are caused to emit light in different phases (e.g., on/off phases, location phases, etc.), in the user operation mode, the first light emitting unit and the second light emitting unit are caused to emit light synchronously, and the user receives an instruction (visual appearance of the light being on or off) to operate the mobile robot based on the detected state of the mobile robot by the external environment (e.g., to include but not limited to a state of mere existence in the external environment).
Gudat does not disclose that the first light emitting unit is disposed at a distal end of the stick portion. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to dispose the Gudat first light emitting unit at a distal end of the Gudat stick portion since such location was well known to be suitable/desirable/obvious as is evidenced by either one or both of: Hagner (see the light emitting unit 18 disposed at the distal end of stick portion 12 and the written descriptions thereof); and/or Poirier (see light emitting unit 81 at distal end of stick portion 50 and written descriptions thereof).
Claim 2. The operation device according to claim 1, wherein the first light emitting unit is provided around (i.e., broadly/reasonably interpreted to mean near in proximity) the stick portion of the stand (around/near/proximity stems from the lights being part of “the system”, col.57, ll.4-13). Alternatively, if applicant intends for “around” to require a circular shape then Poirier teaches such light shape to be desirable/suitable/obvious (see circular shape of the light emitting unit 81 at distal end of stick portion 50 and written descriptions thereof).
Claim 3. The operation device according to claim 1, wherein the stand including the stick portion, the first emitting light unit, and the hardware processor constitute a joystick device (see fig.45).
Claim 5. The operation device according to claim 1, wherein the external environment includes a server (another one or more of 4302, 4304, 4306, 4310, 4308, and/or “system”), and the predetermined light emission pattern (e.g., off) is emitted when a communication between the mobile robot and the server is not available (e.g., when powered off).
Claim 6. The operation device according to claim 1, wherein the operation device is included in the mobile robot (the operation device “lever” is moved by human to initiate autonomous mode before exiting the mobile robot such that the lever must be included in the mobile robot, col.57, ll.4-13; and/or 410 is “plugged into” vehicle 310, col.59, ll.59-65).
Claim 7. A mobile robot comprising the operation device according to claim 1, wherein the predetermined light emission pattern includes an emitted light with mutually complementary colors (in that the warning lights must inherently have some color which is at least complementary to themselves by location/purpose etc. noting the claim does not specify in what manner or with respect to what other element the light is complementary, applicant’s written description merely stating mutually complementary is emitted light of “easily seeable colors”).
Claim 10 (as best understood, see 35 USC 112 rejections). The operation device according to claim 1, wherein the predetermined light emission pattern includes a light emission pattern (another pattern of the “several levels of warning, such as lights”, col.57, ll.4-13, wherein each light of the plurality of lights can be a pattern) that recommends switching a current operation of the mobile robot from the autonomous travel mode to the user operation mode (in that a person seeing the autonomous mode light(s) can take that as a recommendation to switch the autonomous mode back to the manual mode, noting that applicant’s own disclosure fails to describe the recommendation as being anything more than a light pattern occurring to signify autonomous mode).
Response to Arguments
Applicant’s arguments have been carefully considered but are moot in view of the new grounds of rejection 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
1 MPEP 2181 II B states, in 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… In several Federal Circuit cases, the patentees argued that the requirement for the disclosure of an algorithm can be avoided if one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function… Such argument was found to be unpersuasive because 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”.
2 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 in as best as the claims can be understood. However, in accordance with MPEP § 2173, 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).