DETAILED ACTION
This Office action is drafted in response to amendments/remarks dated 08/11/2026. Claims 13-23 are pending. Claims 1-12 are cancelled and claims 22-23 are new. Claims 13-23 are rejected as cited below. This action is made FINAL.
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 Specification Objections
Examiner withdraws the title objection in view of Applicant’s amendments.
Response to Claim Objections
Examiner withdraws the objection to claim 20 in view of Applicant’s amendments.
Response to Arguments
Examiner withdraws the 35 USC § 102 rejection of claims 13 and 17-19, and the 35 USC § 103 rejection of claims 14-16 and 20-21 in view of Applicant’s amendments. These amendments, however, have created new issues. Please reference the Claim Rejections - 35 USC § 112 section below. Due to the indefinite scope(s) of the claims, Examiner reserves the right to reapply any previously cited prior art to future iterations of Applicant’s claims, should said prior art read on the limitations of Applicant’s amended claims.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 13-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 13:
Applicant states, in lines 10-11, that a virtual path will be generated using “the at least one feature and the determined location of the machine frame.” Examiner finds that the disclosure is devoid of any teachings which generate a virtual path using both a feature and a location of the machine frame. Applicant specification ¶ [0055] recites “the virtual path 38 is determined using a reference line 204, such as a curb, or a boundary between a first and second surface, such as a concrete curb and an asphalt roadway.” This does not include the location of the machine frame. Therefore, claim 13 contains limitations which were 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 inventors had possession of the claimed invention at the time the application was filed.
Claims 14-18 and 22 are rejected by virtue of their dependency on claim 13 and not fixing the deficiencies stated above.
Claim 19 recites a method which is performed by the work machine of claim 13, thus is rejected on the same basis.
Claims 20-21, and 23 are rejected by virtue of their dependency on claim 19 and not fixing the deficiencies stated above.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 13:
Applicant states, in lines 8-9, “locating the machine frame in relation to the at least one feature to generate a determined location …”. The language of “… to generate a determined location …” is passively recited, which indicates that the act of locating of the machine frame in relation to the at least one feature may or may not generate a determined location. This is viewed by the examiner as mere “intended use”, which does not explicitly generate any sort of information. It is unclear how this determined location will be used to generate the virtual path when it may not be generated in the first place. The scope of the claim is unclear, and thus indefinite.
Claims 14-18 and 22 are rejected by virtue of their dependency on claim 13 and not fixing the deficiencies stated above.
Claim 19 recites a method which is performed by the work machine of claim 13, thus is rejected on the same basis.
Claims 20-21, and 23 are rejected by virtue of their dependency on claim 19 and not fixing the deficiencies stated above.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Jonathan E Reinert whose telephone number is (571)272-1260. The examiner can normally be reached Mon - Thurs 7AM - 5PM EST.
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 J Lee can be reached at (571) 270-5965. 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.
/J.E.R./Examiner, Art Unit 3668
/BRIAN P SWEENEY/Primary Examiner, Art Unit 3668
