DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. This action is responsive to the following communication: a non-provisional Application filed on March 28, 2024, and claims the benefit of International Patent Application No. PCT/JP2021/036431, filed on October 1, 2021, and thus the effective filing date is October 1, 2021.
Information Disclosure Statement
3. The examiner acknowledges three Information Disclosure Statements submitted on March 28, 2024, August 6, 2024, and October 15, 2025, respectively. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of the Claims
4. Claims 1-7 are pending in the case; Claims 1 and 7 are independent claims. A preliminary amendment was filed on March 28, 2024, amending dependency of Claims 3-6 (it is noted that a listing of claims was filed on October 2, 2024 which appeared to correspond to the original set of claims (i.e., without amendments to Claims 3-6); also, the published application (see US 2025/0028327 A1) lists the original, not amended, set of claims – for the purposes of examination, the examiner is examining the claims corresponding to the Preliminary Amendment filed on March 28, 2024, but Applicant should make it clear on the record whether the submission on October 2, 2024 inadvertently included the original listing of claims rather than the amended claims). This action is made non-final.
Claim Interpretation – 35 U.S.C. § 112(f)
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in the Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in the Office action.
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 limitation(s) uses a generic placeholder 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 limitation(s) is/are: “a driving unit that is capable of remote operation…,” “a first input unit that is input of an instruction to the robot…,” “a callup unit that … transmits a callup notification…,” and “a second input unit that is input of an instruction to the robot…,” in Claim 1, “a storage unit for storing information…” in Claim 3, “a speech input unit that accepts input of speech” and “a speech recognition unit that recognizes speech” in Claim 5, and “a driving unit that is capable of remote operation…,” “an input unit that is for input of an instruction to the robot…,” and ”a callup unit that … transmits a callup notification….”1
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (see Instant Specification as published (US 2025/0028327 A1), Figs. 2 and 3, ¶¶ 0028-30, 0036, 0047, and 0064, describing “driving unit,” “storage unit,” and “speech recognition unit”; but see discussion of § 112(b) rejection, below regarding “input units,” “callup unit,” and “speech input unit”). For the purposes of examination, the units that do not appear to have a corresponding structure sufficiently described in the Specification (i.e., “input units,” “callup unit,” and “speech input unit”) are being considered as computing components (implemented in hardware or in a combination of hardware and software of the robot).
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
(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.
5. Claims 1-7 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.
With respect to independent Claim 1 (and similarly, independent Claim 7), Claim 1 recites “a first[/second] input unit that is input of an instruction to the robot…” and “a callup unit that … transmits a callup notification…,” and these limitations appear to invoke 35 U.S.C. 112(f). However, the written description fails to disclose a particular structure that is required to perform these functions. It is noted that the instant Specification mentions some examples of these units (see, for example, Specification (as published (US 2025/0028327 A1)), ¶ 0041 (“The CPU 20a may also function as callup unit”), ¶¶ 0035, 0045 (input units … “may include a keyboard and a touch panel, for example”), but there does not appear to be any explicit disclosure or requirement that these units have to be implemented, at least in part, in hardware, thus a skilled artisan would not be able to readily understand which structure (or structures) are required to perform the claimed functions. Therefore, Claim 1 (and similarly, Claim 7) is indefinite and is rejected under 35 U.S.C. 112(b). Dependent Claims 2-6 fail to cure the deficiencies of Claim 1, and are thus also rejected under § 112(b) under the same rationale2.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hanrahan et al. (hereinafter Hanrahan), US 2011/0190930 A1, published on August 4, 2011.
With respect to independent Claim 1, Hanrahan teaches a communication system, comprising:
a robot that is not fixed (see Fig. 1 (element 12, including element 34), ¶¶ 0021, 0024, 0035); and
a computer that is capable of communication with the robot (see Fig. 1 (element 16), ¶¶ 0021, 0023),
wherein the robot includes
a camera (see Fig. 1 (element 38), ¶¶ 0021, 0024),
a driving unit that is capable of remote operation by the computer (see Fig. 1 (element 34), ¶ 0035; see also ¶ 0005),
a first input unit that is for input of an instruction to the robot (see Fig. 2 and 3 (elements 40, 42), ¶¶ 0024, 0026), and
a callup unit that, when communication connection is not established with the computer, transmits a callup notification directed to the computer in accordance with the instruction that has been input to the first input unit (see Fig. 13, ¶ 0064, showing that the robot interface allows a user at the robot site to initiate a teleconferencing sessions), and
the computer includes
a second input unit that is for input of an instruction to the robot (see Fig. 1 (element 32), ¶¶ 0023-24, 0035; see also ¶¶ 0047-48), and
a display unit that displays an image captured by the camera … (see Fig. 1 (element 24), ¶ 0047).
It is noted that Hanrahan does not appear to explicitly teach a display unit [of the computer that], in a case of receiving the callup notification from the robot, displays that the notification has been received, but a skilled artisan would understand that some form of notification would be provided to an operator on a remote computer when the user at the robot site initiates a teleconferencing session, as is well known and customary in the art (i.e., ringing a telephone, displaying a notification that accepts/rejects the connections, etc., allowing the receiving user to decide when/if to join the teleconference). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of effective filing, with a reasonable expectation for success, to modify the display at the remote control station to provide teleconference request notification when the request is initiated by a user at the robot site in order to allow the operator of the remote control station to decide when/if to join the teleconference, similar to allowing the user at the robot site to allow/deny such request (see Fig. 14).
With respect to independent Claim 7, this claim is directed to a robot of a mobile type or of a mounted type, such robot comprising the same components/features as the robot in Claim 1, and is thus, in view of the following, rejected under a similar rationale as Claim 1, above. It is noted that Claim 1 explicitly requires a robot that is “not fixed” (i.e., mobile type), but Hanrahan clearly discloses that the robot described therein can be either mobile or mounted (see Fig. 12, ¶ 0062, in addition to discussion of Claim 1, above).
With respect to dependent Claim 2, Hanrahan discloses the communication system according to claim 1, as discussed above, and further discloses wherein, in a case in which the display unit displays that the callup notification has been received, the computer establishes a communication connection for a call with the robot in accordance with input to the second input unit (see ¶ 0064 and discussion/rationale in Claim 1 rejection regarding receiving a teleconference notification from the user at the robot site).
With respect to dependent Claim 3, Hanrahan discloses the communication system according to claim 1, as discussed above, and further discloses wherein the robot further includes a storage unit for storing information representing at least one computer that is capable of communication with the robot, and the callup unit transmits the callup notification to a computer corresponding to information selected, out of the information representing at least one computer, in accordance with input to the first input unit (see Fig. 13, 0064).
With respect to dependent Claim 5, Hanrahan discloses the communication system according to claim 1, as discussed above, and further suggests wherein the first input unit is a speech input unit that accepts input of speech, the robot further includes a speech recognition unit that recognizes speech, which has been input to the first input unit, and performs conversion thereof into text, and in a case in which speech including a particular text is input to the first input unit, the callup unit transmits the callup notification to a computer that is set in advance, out of the at least one computer (see ¶ 0037). Although Hanrahan does not appear to describe in detail the operations of the suggested voice recognition system, a skilled artisan would understand that various commands could be inputted via speech and that such input can be processed in various ways, which would likely include a speech-to-text conversion, as was well-known in the art at the time the instant application was filed. In addition, a skilled artisan would understand that speech inputs can correspond to shortcuts resulting in execution of a particular action when a particular input is provided. As such, it would have been obvious to one of ordinary skill in the art at the time of effective filing, with a reasonable expectation of success, to implement the voice recognition system into the user interface of Hanrahan in order to make the system useable by more users, such as visually impaired people, people that are unable to use the touch screen or provide gestures, etc.).
With respect to dependent Claim 6, Hanrahan discloses the communication system according to claim 1, as discussed above, and further discloses wherein in a case in which the display unit displays that the callup notification is received, the computer transmits a response notification to the robot in accordance with input to the second input unit, and thereafter establishes a communication connection for a call with the robot, and the robot presents a user with a message in accordance with the response notification received from the computer (see ¶ 0064 and discussion/rationale in Claim 1 rejection regarding receiving a teleconference notification from the user at the robot site).
7. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hanrahan et al. (hereinafter Hanrahan), US 2011/0190930 A1, published on August 4, 2011, in view of Schoenberg, US 9,015,609 B2, issued on April 21, 2015.
With respect to dependent Claim 4, Hanrahan discloses the communication system according to claim 1, as discussed above, and while Hanrahan teaches that the robot is connected to a network, such as Internet (see Figs. 1 and 4 (element 18), ¶ 0022), Hanrahan does not appear to explicitly illustrate wherein the robot connects to the Internet in accordance with input to the first input unit, and searches for information relating to computers capable of communication connection with the robot, and the callup unit transmits the callup notification to a computer corresponding to information selected, out of the information that is searched for, in accordance with input to the first input unit. However, a skilled artisan would understand that the robot’s user interface could allow the user to initiate a contact with any desired contact in order to expand the robot’s usability/utility, and it would have been obvious to a skilled artisan, at the time the instant application was filed, to rely on the Internet to search for such contact information, as illustrated by the prior art of Schoenberg.
Schoenberg is directed towards connecting service providers with other service providers (see Schoenberg , col. 1, lines 18-19). Schoenberg suggests a graphical user interface for a provider search (see Schoenberg, Fig. 3, col. 5, lines 17-36). Schoenberg further suggests providing results for the search and allowing the user to connect with a desired provider through the user interface (see Schoenberg, Fig. 6 (element 614), col. 6, lines 5-55; see also Figs. 9A-B, col. 8, lines 36-52). A skilled artisan would understand that the provider search described in Schoenberg could be modified for various users but operated in a similar manner; furthermore, a skilled artisan would understand that the user interface displayed in Schoenberg could be displayed on the user interface of the robot in Hanrahan and operated in a similar manner. As such, it would have been obvious to one of ordinary skill in the art at the time of effective filing, with a reasonable expectation of success, to modify the user interface of Hanrahan with the searching interface and ability to connect with a resulting contact as suggested by Schoenberg, in order to enable the user of the robot to communicate with more parties (in a hospital setting, such ability would allow the patient to seek a second opinion, obtain a translation, etc., and would allow for less equipment in the patient’s room).
A reference to specific paragraphs, columns, pages, or figures in a cited prior art reference is not limited to preferred embodiments or any specific examples. It is well settled that a prior art reference, in its entirety, must be considered for all that it expressly teaches and fairly suggests to one having ordinary skill in the art. Stated differently, a prior art disclosure reading on a limitation of Applicant's claim cannot be ignored on the ground that other embodiments disclosed were instead cited. Therefore, the Examiner's citation to a specific portion of a single prior art reference is not intended to exclusively dictate, but rather, to demonstrate an exemplary disclosure commensurate with the specific limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275, 277 (CCPA 1968)). In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792,794 n.1,215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Celmins et al. (US 11,742,094 B2) describes voice recognition as one of possible ways to provide user input. Vu et al. (US 2007/0192910 A1) describes a companion robot that is responsive to voice commands, among different types of input. Herzog et al. (US 9,138,891 B2) describes server connectivity and corresponding privileges for tele-presence robots.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DINO KUJUNDZIC whose telephone number is (571)270-5188. The examiner can normally be reached M-F 8am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Worden can be reached on 571-272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DINO KUJUNDZIC/Primary Examiner, Art Unit 3658
1 ”It is noted that the recited limitations use a generic placeholder (i.e., unit) coupled with functional language (i.e., driving, input, etc.), without reciting sufficient structure to perform the recited function (and the generic placeholder is not preceded by a structural modifier).
2 Note that dependent Claim 5 further recites “a speech input unit that accepts input of speech”, but the written description fails to disclose a particular structure that is required to perform this function (see Specification (as published), ¶ 0064, merely mentioning a speech input to the robot), thus a skilled artisan would not be able to readily understand which structure (or structures) are required to perform the claimed function.