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 .
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.
Joint Inventors
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 22nd, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 11 is objected to under 37 CFR 1.75 as being a substantial duplicate of Claim 6. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Double Patenting
Claims 1-20 of this application are patentably indistinct from claims 1-20 of Application No. 17,449,137. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 1-3 and 5-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12,085,942 B1.
Regarding Claims 1-3 and 19-20, these claims contain the exact same subject matter and scope as claims 1-2 and 19-20 of U.S. Patent No. 12,085,942 B1, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the only distinguishing limitations in the instant application include the replacement of “obstacle detection heuristics” with “optimization framework”, which is a much broader term for describing the same feature. Additionally, the limitation of “updating an optimization framework associated with control of the robotic device” is also written broadly enough to be read upon with the repeated use of the limitation “updated obstacle detection heuristic” in Claims 1 and 19-20 of U.S. Patent No. 12,085,942 B1. Furthermore, the instant application claims a much broader scope for the limitation of “receive initial environmental sensor data associated with a robotic device” by removing “the one or more past trajectories are associated with initial environmental sensor data and one or more obstacle detection heuristics” in claims 19-20. Claim 2 merely restates the last limitation in combination with the one before it in claim 1 while replacing the determination of the predicted drivable areas with “initial environmental sensor data is associated with […]”; and claim 3 merely restates the first limitation of claim 2. Other than what has been stated, these claims are exactly the same.
Regarding Claims 5-10 (along with 11, due to being an exact duplicate of claim 6), these claims contain the exact same subject matter and scope as claims 3, 5-8 of U.S. Patent No. 12,085,942 B1, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the only distinguishing limitations in the instant application include the replacement of “obstacle detection heuristics” with “optimization framework” in claims 6 and 8-10, which is a much broader term for describing the same feature. Furthermore, claim 7 is an exact copy of claim 5. Lastly, the claims in the instant application are given a much broader scope by removing “the one or more unsuccessful trajectories are associated with additional initial environmental sensor data and one or more additional obstacle detection heuristics” from claim 6, which claims 7-10 are dependent upon. Other than what has been stated, these claims are exactly the same.
Regarding Claim 12-18, these claims contain the exact same subject matter and scope as claims 10-11 and 13-17 of U.S. Patent No. 12,085,942 B1, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the only distinguishing limitations in the instant application include the addition of “optimization framework” in claims 12-13 and replacement of “obstacle detection heuristics” with “optimization framework” in claims 14 and 17-18, and removal of “obstacle detection heuristics” in claim 15. Furthermore, claim 16 of the instant application merely includes the limitation of “configured to output obstacle detection heuristics”, which is included in claim 15. Other than these additions/removals/replacements, these claims are exactly the same.
Examiner notes Claim 4 is not being given a double patenting rejection because the limitation of “the optimization framework is a machine learning model” is the only limitation not mentioned in Claims 1-20 of U.S. Patent No. 12,085,942 B1. However, it has been given a 35 U.S.C. 112(b) rejection due to dependency below.
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 is: “optimization framework” in claims 1, 4-6, 8-14 and 16-20.
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 1, 5-6, 8-14 and 16-20 (along with 2-4, 7 and 15 due to dependency) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
The term “optimization framework” in claims 1, 5-6, 8-14 and 16-20 lacks definitive structure in the claim and the specification, which renders the claim indefinite. The term “optimization framework” is not defined by the claim, the specification merely provides an example for this limitation in [0034], “using an optimization framework, such as Google Vizier […] the optimization framework may be an algebraic equation […] may be a machine learning model”, but does not provide a standard for ascertaining the requisite degree, standard or structure for what qualifies an appropriate “optimization framework”, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Examiner notes that Claim 4 also includes the limitation of “optimization framework”, but is defining this limitation specifically as “a machine learning model”.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The subject matter in every claim of the instant application is substantially similar to those in previously allowed application 17/449,137 corresponding to U.S. Patent No. 12,085,942 B1, which the Examiner had previously discussed with art unit supervisor and primary and allowed. However, as noted above in the Double Patenting section, these claims are not patentably distinct due to the distinguishing limitations in the instant application, which have been further rejected in the 35 U.S.C. 112(b) section above. Despite these claims containing allowable subject matter as indicated in the parent case, the instant application is not in condition for allowance until both issues above have been resolved.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryant Tang whose telephone number is (571)270-0145. The examiner can normally be reached M-F 8-5 CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Worden can be reached at (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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/BRYANT TANG/Examiner, Art Unit 3658
/JASON HOLLOWAY/Primary Examiner, Art Unit 3658