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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-9 of U.S. Patent No. 12,046,148 to Hashimoto et al. (hereinafter “Hashimoto”). Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 1-8 are anticipated by patent claims 1 and 3-9. Patent claim 1 of Hashimoto ‘148 recites in part the additional limitations of “acquire motivation information for motivating the operator so that the operator increases an amount of work or a speed of work on the robot body, the motivation information being based on at least one of the amount of work performed by the robot body and the speed of work performed by the robot body; a manipulator configured to send the operator command to the processor according to manipulation by the operator; and a motivation information presenter configured to present to the operator the acquired motivation information”. In patent claim 1 of Hashimoto ‘148, the motivation information is claimed as being based on at least one of the amount of work performed by the robot body and the speed of work performed by the robot body, and this motivation information is presented. Information based on an amount of work and/or a speed of work can be the amount of work and/or speed of work itself, and therefore, patent claim 1 of Hashimoto ‘148 reads on the limitations of application claim 1, wherein at least one of an amount of work performed by the robot body and a speed of work performed by the robot body is acquired and presented by a motivation information presenter to the operator. Therefore patent claim 1 of Hashimoto ‘148 is in essence a “species” of the generic invention of application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Dependent claims 2-8 are further anticipated by patent claims 3-9 of Hashimoto ‘148.
Claims 9-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 3-9 of U.S. Patent No. 12,046,148 to Hashimoto et al. (hereinafter “Hashimoto”). While application claims 10-18 and 19-20 are directed to a method and non-transitory computer-readable medium, respectively, and patent claims 1 and 3-9 of Hashimoto ‘148 are directed to a system, the method and non-transitory computer-readable medium claims are obvious variations of the system claims. The limitations of patent claims 1 and 3-9 of Hashimoto ‘148 are not patentably distinct from application claims 10-17 and 19, as previously discussed above with respect to application claims 1-8 above.
With regards to application claims 9, 18, and 20, patent claims 1 and 3-9 of Hashimoto ‘148 may not explicitly recite wherein both the amount of work and the speed of work performed by the robot body are presented, as required by the recited application claims. However, as noted above, patent claim 1 of Hashimoto ‘148 recites in part “the motivation information being based on at least one of the amount of work performed by the robot body and the speed of work performed by the robot body; […] and a motivation information presenter configured to present to the operator the acquired motivation information” (emphasis added), wherein it is noted that information based on an amount of work and/or a speed of work can be the amount of work and/or speed of work itself. The recited limitation of patent claim 1 of Hashimoto ‘148 recites the motivation information being “based on at least one” of the amount of work and speed of work performed by the robot body, as opposed to the motivation information being “based on one” of the amount of work and speed of work of the robot body, for example. Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date that the motivation information, presented to the operator, may be both the amount of work and speed of work performed by the robot body, as recited in application claims 9, 18, and 20.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation 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 is: motivation information presenter recited in claims 1, 3, and 9.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the Specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 and 16 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.
Claim 13 recites the limitation “the processor” in ln. 2. There is insufficient antecedent basis for this limitation in the claim. Accordingly, the claim is rejected for indefiniteness.
Claim 16 is rejected for the same reasoning (see claim 16, ln. 2).
Acknowledgments
No prior art is provided for claims 1-20. The prior art fails to disclose, teach, or suggest all of the claim limitations recited in the independent claims. For example, U.S. 5,442,269 A teaches sensors mounted on an end effector to obtain a speed and work rate of the end effector, but fails to teach start-of-work and end-of-work detectors (sensors) separate from the end effector which detect when the end effector of the robot body is located above the detectors indicating a start and end of the work, as required by independent claims 1, 10, and 19. Moreover, U.S. Pub. 2013/0338827 A1 teaches receiving an operation time from work start point to work end point; however, this reference similarly fails to teach detectors separate from the end effector such that the start and end of the work are detected when the end effector is located above the detectors.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA N BRANDLEY whose telephone number is (571)272-4280. The examiner can normally be reached M-F: 8:30am-5:00pm.
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/ALYSSA N BRANDLEY/Examiner, Art Unit 3715