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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement filed on 4/01/2026 has been considered. An initialed copy of form 1449 is enclosed herewith.
Claim Interpretation
4. 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 generic placeholder word “unit” coupled with functional language without reciting sufficient structure to achieve the function 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.
Claim limitation “compensation value calculation unit configured to calculate a viscous resistance compensation value” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “to calculate a viscous resistance compensation value;” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1- 7 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure of the limitations:
“compensation value calculation unit”: block (13) depicted in figure 3 and figure 4 shows values for viscous resistances as experimental values.
If applicant does not intend to have this/these limitations 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 § 112
5. 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.
Claim element “compensation value calculation unit configured to calculate a viscous resistance compensation value” found in claim 1 is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function.
As set forth above, the " calculation unit " finds is structure to be block (13) depicted in figure 3. However, as held by the courts, when the disclosed structure of a means plus function limitation is a computer programmed to carry out an algorithm, the disclosed structure is not the general purpose computer (ASIC or FPGA), but rather that special purpose computer programmed to perform the disclosed algorithm. See, for instance, In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) or In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994)(en bane). Therefore, in cases that involve a special purpose computer, the Federal Circuit has consistently required that the specification must disclose an algorithm for performing the claimed function. See, for instance, Aristocrat, 521 F.3d at 1333, 96 USPQ2d at 1239.
Accordingly, to claim a means for performing a specific computer-implemented function (in the instant case, integrated circuit ASIC or FPGA. ¶. [0065]) and then to disclose only a general purpose computer as the structure (i.e. no specific algorithm) amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239.
As the instant specification fails to disclose the necessary algorithm for performing the claimed function, the claim is rejected as indefinite, as per Aristocrat, 521 F.3d at 1337-38, 86 USPQ2d at 1242. Mere reference to a general purpose computer without providing an explanation of the appropriate programming necessary to perform the claimed function is not an adequate disclosure of the corresponding structure to satisfy the requirements of 35 USC l 12(b).
Accordingly, the claim limitation is considered indefinite, as the metes and bounds of the limitation cannot be ascertained due to the lack of a disclosed algorithm for performing the function of the calculation unit claimed in means plus function form.
This rejection also holds for claims 2- 7 by virtue of its dependence on claim 1.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. l 12(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, 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 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:
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
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 CPR l.75(d) and MPEP §§ 608.0l(o) and 2181.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “viscous resistance, in the claims is used by the claim to mean “the influence of the frictions in the actuators, particularly in the speed reducers,” while the accepted meaning is “a fundamental concept in fluid dynamics, describing the opposition to motion caused by internal friction” The term is indefinite because the specification does not clearly redefine the term.
Claims 1- 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: The Claimed invention is designed to work in low speed operation range (Spec. ¶. [0047]).
6. 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 1- 9 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 claims 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. In the instant application, the claimed function: “the calculation of the viscous resistance values.”
The rejection is made because an indefinite, unbounded limitation would cover all structure that performs the claimed function. Because the specification has not clearly set forth the requisite algorithm allowing the control device that comprises part of the processing module to perform the claimed function that would not allow one having ordinary skill in the art to make or use the apparatus with the corresponding
functionality, this indicates that applicant has not provided sufficient disclosure to show
possession of the invention.
Claims 1- 9 are rejected by virtue of its dependency on claims 1, 8 and 9, thereby containing all the limitations of the claim on which it depends.
Claim Rejections - 35 USC § 102
7. 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.
Claims 1- 9, so far as been understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamamura et al. (US 20030020427 A1.)
Re. claims 1, 8 and 9, Hamamura discloses a robot control device (Field of the Invention), comprising:
a speed calculation unit (12) configured to calculate a speed of an output shaft of a drive unit configured to drive a robot (angular velocity); and
a compensation value calculation unit (15 and 16) configured to calculate a viscous resistance compensation value (18), the viscous resistance compensation value being a value for generating a second torque command to be output to the drive unit by compensating for a supplied first torque command (feedforward control of the torque ¶. [0103]- [0110]) in such a manner that a second viscous resistance is closer to zero than a first viscous resistance, the first viscous resistance being a viscous resistance at a first speed detected by the speed calculation unit, and the second viscous resistance being a viscous resistance at a second speed lower than the first speed (see Fig. 6).
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAID BOUZIANE whose telephone number is (571)272-7592. The examiner can normally be reached Mon-Fri 6:00-15:00.
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/SAID BOUZIANE/Primary Examiner, Art Unit 2837
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