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 .
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(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:
Claim(s)
Generic Placeholder or “means for”
Functional Language
Corresponding Structure
11-17
a “positioning element”
to determine a position of the utility locator device in the world frame;
“The positioning element may be or include one or more GNSS receivers and antennas (e.g., GPS, Galileo, GLONASS, BeiDou, or the like) in generating a geolocation for the utility locator device. Likewise, the positioning element may include one or more inertial sensors (e.g., one or more accelerometers, gyroscopic sensors, compasses or other magnetometers, and the like) in determining movements of the utility locator device as well as the pose and orientation of the utility locator device at geolocations” Spec [0026]
11-17
a “processing element”
to identify electromagnetic signals that conform to a cylindrical magnetic field model and align to be spatially linear and further remain stationary in the world frame when measured at two or more points in space in determining and mapping utility lines a display element for communicating mapped utility lines to a user
“one or more processors to identify electromagnetic signals that conform to a cylindrical magnetic field model and align to be spatially linear and further remain stationary in the world frame when measured at two or more measurement points in determining and mapping utility lines” Spec [0026]
11-17
A “display element”
for communicating mapped utility lines to a user
“The utility locator device 310 may further include a display or other output (e.g., a display / other output 392). The display / other output 392 may communicate information related to the presence and geolocations of utility lines as well as related electromagnetic signal data and other device or system related data to a user. For instance, the display / other output 392 may include a graphical user interface to visually represent maps that include geolocations of utility lines (e.g., the map 260 of FIG. 2). Likewise, the display / other output 392 may include speakers to audibly communicate information related to the presence and geolocations of utility lines as well as related electromagnetic signal data and other device or system related data to a user. Further, the display / other output 392 may include haptic feedback mechanisms and/or other mechanisms in communicating information related to the presence and geolocations of utility lines as well as related electromagnetic signal data and other device or system related data to a user.” Spec [0049]
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are 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/these limitation(s) 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(s) to avoid it/them 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(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The claims are directed at methods and apparatus and therefore are directed at one of the four statutory categories
Step 2A prong 1
Prong 1 requires the Examiner to determine whether the claims recite an abstract idea that fall under one of the following four categories: a) mathematical concept, b) certain methods of organizing human activity, c) mental process, or d) other abstract ideas such as an idea of itself.
The claim limitations in the abstract idea have been highlighted in bold below; the remaining limitations are "additional elements."
Specifically representative Claim 1 recites:
a utility locating method, comprising:
mapping the geolocations of electromagnetic signals measured from two or more points in space via a utility locator device (abstract; computer implementation of method; mathematical concepts, and/or mathematical calculations; mental process, judgement by user; also does not add significantly more because this represents extrasolution activity);
filtering out electromagnetic signals that move spatially in the maps of electromagnetic signals measured at the different points in space (abstract; mathematical concepts, and/or mathematical calculations; mental process, judgement by user; also does not add significantly more because this represents extrasolution activity);
grouping electromagnetic signals based on electromagnetic signal patterns that are spatially linear (abstract; mathematical concepts, and/or mathematical calculations; mental process, judgement by user; also does not add significantly more because this represents extrasolution activity); and
identifying utility lines where electromagnetic signals fit a cylindrical magnetic field model (abstract; mathematical concepts, and/or mathematical calculations; mental process, judgement by user; also does not add significantly more because this represents extrasolution activity).
Specifically representative Claim 11 recites:
A utility locator device, comprising:
one or more antennas and associated receiver circuitry to measure electromagnetic signals across a range of frequencies and determine the position of the source of the signal relative to the utility locator device (does not add significantly more because this represents extrasolution activity, see prong 2, 2B below in which this limitation is discussed);
a positioning element to determine a position of the utility locator device in the world frame (abstract; mathematical concepts, and/or mathematical calculations; mental process, judgement by user; also does not add significantly more because this represents extrasolution activity);
a processing element to identify electromagnetic signals that conform to a cylindrical magnetic field model and align to be spatially linear and further remain stationary in the world frame when measured at two or more points in space in determining and mapping utility lines (abstract; mathematical concepts, and/or mathematical calculations; mental process, judgement by user; also does not add significantly more because this represents extrasolution activity); and
a display element for communicating mapped utility lines to a user (does not add significantly more because this represents extrasolution activity, see prong 2, 2B below in which this limitation is discussed).
In addition, Claims 2-10 and 12-17 are also rejected for the same reasoning as Claims 1, and 11, as these dependent Claims are subject to the same abstractions without adding significantly more.
However, some limitations of Claim 11 would constitute a practical application if amended to positively recite the activity of the apparatus such that the apparatus is recited as tangibly performing a process. For instance, if the recitation of “a display element for communicating mapped utility lines to a user” were rewritten as “a display element that communicates mapped utility lines to a user”, a practical application of the device would be reached. Therefore, the rejection under 35 USC 101 for Claims 11-17 would be obviated should they be rewritten to include positive recitations of practical applications of the device.
The highlighted portion of the claim constitutes an abstract idea because it is analogous to other ideas identified as abstract in court decisions.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above, where noted, is analogous to subject matter deemed an abstract idea in previous court decisions as mental processes that can be performed in the human mind (MPEP 2104.04(B)(iii).
The claims at issue can be summarized, where noted, as concepts that can be performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972); Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965). Notably, in Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147-49, 120 USPQ2d 1473, 1480-81 (Fed. Cir. 2016), the court disagreed, because it interpreted the claims as encompassing nothing other than pure mental steps (and thus falling within an abstract idea grouping) because the claims did not include any limitations requiring computer implementation. The court held that the claims were directed to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes can be performed by humans with the assistance of physical aids such as pens or paper.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above is analogous to subject matter deemed an abstract idea in previous court decisions as collecting, displaying, and manipulating data (MPEP 2104.04(B)(i) and collecting information, analyzing it, and displaying certain results of the collection and analysis (MPEP 2104.04(B)(ii).
The claims at issue can be summarized, where noted as merely mathematical concepts and calculations, as collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group v. Alstrom, 2015-1778). Both cases are highly relevant and also very recent. Information as such is an intangible. See Microsoft Corp. v. AT & TCorp., 550 U.S. 437,451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340F.3d 1367, 1372 (Fed. Cir. 2003). See also the seminal case of Parker v. Flook, 437 U.S. 584, where the Supreme Court found that mere post-solution activity (such as the natural output of a mathematical algorithm) does not make the ineligible eligible. The CAFC has treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349;... In a similar vein, the Court has treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. See, e.g., TLI Commc'ns, 823 F.3dat 613;. . . And the Court has recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. See, e.g., Content Extraction, 776F.3dat 1347.
Step 2A prong 2
Under prong 2 Examiner is to determine whether the additional elements integrate the abstract idea into a practical application. In order to do this Examiner must identify whether there are additional elements and evaluate whether those additional elements individually and in combination integrate the abstract idea into a practical application.
In this case, there are no additional elements aside from describing the gathered data. The only elements of Claims 1-17 are directed towards gathering and manipulation of data and/or mental processes and no result is discussed. Without a result there can be no practical application of the algorithm of Claims 1-17.
Courts have determined that elements including sensors, processors and memory do not cause a Claim having an abstract idea to be directed at more than the abstract idea. For example. Courts have declined to find significantly more than an abstract idea in claims involving receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto.
LLC, 823 F.3d 607, 610,118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359,1363,115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355,112 USPQ2d 1093,1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245,1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Also, Courts have declined to find significantly more than an abstract idea in claims involving performing repetitive calculations, Flook, 437 U.S. at 594,198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266,1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Furthermore, as stated above, the act of repair and maintenance is wholly unrelated to the abstract idea/algorithm. In Diehr, the abstract algorithm was tied into a practical application because the rubber that was manufactured had characteristics (the degree of cure) that was determined by the algorithm. In this case, the algorithm has no effect on the repair, aside from merely flagging the need for repair, much more analogous to the alarm limit in Flook.
Step 2B
In step 2B Examiner must determine whether the additional elements are well-understood, routine, and conventional. Examiner must do this consistent with the Berkheimer Memo.
The Berkheimer Memo describes "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP’s noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
As mentioned above, there are no additional elements in Claims 1-17 aside from the recitation of the algorithm, performative mental processes, and the data gathered and manipulated.
As such, there are no additional elements to be considered individually and in combination with the other claim elements, and therefore cannot make the claim as a whole significantly more than the abstract idea itself. Rather than being a particular limited application of the abstract idea which serves to improve a specific method or device, the claim would tend to monopolize the abstract idea itself in practice.
Stated simply, nothing in claims 1 and 11 form a nexus between the algorithm and a utility locator device or method. Claims 2-10 and 12-17 do not include any limitations to cause the claims to be directed at more than the abstract idea.
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 4 and 9 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.
RE Claim 4, the recitation of “the distance between measurement points in space are at a distance equal to or greater than the distance between measurement points in space and a utility line” is indefinitely because the metes in bounds of what constitutes the physical distance between “measurement points in space” cannot be concretely discerned. The specification does not seemingly elaborate on a substantive description of what these two points could be in such a manner that allows for a reasonable examination of the relative magnitude between two or more “measurement points in space” and the distance between a point in space and a defined location, i.e. a point on a utility line. For the purpose of further examination, the limitation will be interpreted as the points where recurring measurements are taken are a greater distance than the distance of any one of those points and the utility line.
RE Claim 9, the term “near real-time” in claim 9 is a relative term which renders the claim indefinite. The term “near”, in particular, is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The metes and bounds of such a term could not be concretely discerned from the specification.
Claim Rejections - 35 USC § 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.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olsson et al. WO 2019/136390.
Regarding Claim 11, Olsson teaches a utility locator device (see [00092] and figure 1), comprising:
one or more antennas and associated receiver circuitry to measure electromagnetic signals across a range of frequencies and determine the position of the source of the signal relative to the utility locator device (see figures 1 and 5A, and [00092]-[00096], teaching the utility locator device comprised of 110 and 520 and associated receiver circuitry, operating on a range of frequencies, to determine relative position of a POI);
a positioning element to determine a position of the utility locator device in the world frame (see [00096] teaching a satellite receiver as a positioning element for use with 110);
a processing element to identify electromagnetic signals that conform to a cylindrical magnetic field model and align to be spatially linear and further remain stationary in the world frame when measured at two or more points in space in determining and mapping utility lines (see figure 1 and [000137] showing the utility locator and circuitry for mapping the cylindrical magnetic field for determining mapping of utility lines when measuring with multi-point use); and
a display element for communicating mapped utility lines to a user (see figure 2g and [000115]).
Regarding Claim 1, the device as recited in claim 11 is specific to this method and thus it must perform the method. The method is intrinsic to the apparatus because the recited method steps will be performed during normal operation of the apparatus. Therefore, Claim 1 is also rejected.
Regarding Claim 2, Olsson teaches the method of Claim 1, further filtering out non-spatially linear electromagnetic signal data where the magnitude of an electromagnetic signal falls beneath a predetermined threshold (see figure 1, 5A, as well as [000111] and [000193]-[000195], which broadly meet this limitation).
Regarding Claim 3, Olsson teaches the method of Claim 1, wherein the method repeats measuring electromagnetic signals at additional geolocations (this is broadly met as the device can be used at multiple locations with repeated measurements; see claims 1 and 5A).
Regarding Claim 4, Olsson teaches the method of Claim 1, wherein the distance between measurement points in space are at a distance equal to or greater than the distance between measurement points in space and a utility line (see figures 1 and 5A, as well as the rejection under 112(b) above).
Regarding Claim 5, Olsson teaches the method of Claim 1, wherein a pipe Sonde and/or other dipole beacon are identified and the geolocation thereof is determined by the utility locator device (see [00071]-[00072]).
Regarding Claim 6, Olsson teaches the method of Claim 1, wherein other objects present in the locate environment are identified via user input (see [00032] and figures 1 and 5A).
Regarding Claim 7, Olsson teaches the method of Claim 1, wherein other objects present in the locate environment are tagged via a rangefinder apparatus (see [000102] and [000104]).
Regarding Claim 8, Olsson teaches the method of Claim 1, wherein other objects present in the locate environment are identified by various electromagnetic signal attributes (seen in figures 1 and 5A).
Regarding Claim 9, Olsson teaches the method of Claim 1, wherein the method is processed on a utility locator device in real-time or near real-time (see [000138]).
Regarding Claim 10, Olsson teaches the method of Claim 1, wherein the method is processed in a remote database (see [000115]).
Regarding Claim 12, Olsson teaches the device of Claim 11, having twelve antennas arranged in a dodecahedral array (see [00065]).
Regarding Claim 13, Olsson teaches the device of Claim 11, wherein the positioning element includes one or more GNSS receivers (see [000187]).
Regarding Claim 14, Olsson teaches the he device of Claim 11, wherein the positioning element includes one or more inertial sensors (see [00076]-[00078], [000103], [000106]).
Regarding Claim 15, Olsson teaches the device of Claim 11, further including a rangefinder apparatus for tagging objects in the locating environment (see [000102] and [000104]).
Regarding Claim 16, Olsson teaches the device of Claim 11, further including a radio apparatus in communicating with one or more external devices (see [00095]).
Regarding Claim 17, Olsson teaches the device of Claim 11, wherein data regarding mapping of utility lines determined by the utility locator device is communicated with a remote database (see [000115]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A HARRISON whose telephone number is (571)272-3573. The examiner can normally be reached Monday-Friday 9:00 AM - 5:00 PM.
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, STEPHANIE BLOSS can be reached at (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A HARRISON/Examiner, Art Unit 2852
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