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 .
Claims
Claims 1-2, 4-11, and 13-17 are pending.
Specification
One of the objections to the specification has still not been addressed: [0038]: “The construction data storage unit stores each of positions of a plurality of point” should be “The construction data storage unit stores each position of a plurality of points.”
Response to Arguments
Applicant's arguments concerning the 101 rejections, filed 3/11/2026, have been fully considered but they are not persuasive. Applicant’s arguments present a detailed depiction of the technology behind the broad claims and would be considered persuasive if the details were included in the claims. However, the amendments of the claims only clarify the grammar and flow of language of the claims (and move material from claims which have been judged 101-ineligible to other claims which are 101-ineligible), but do not add the concrete elements from the arguments which would render the claims 101-eligible.
MPEP 2106.05 (f) says, “When determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following:
Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743. “
Henceforth, as described below, the claims are considered to be equivalent to simply stating “apply it” to the judicial exceptions and do not contain sufficient concrete description of the technology. Therefore, the examiner respectfully disagrees.
Applicant’s arguments, see pgs. 10-12, filed March 11, 2026, with respect to 35 USC 102(a)(1) have been fully considered and are persuasive. The rejections of claims 1-2, 4-11, and 13-17 under 102(a)(1) have been withdrawn.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4-11, and 13-17 are rejected under 35 U.S.C. 101 because they are directed toward abstract ideas without significantly more.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), see MPEP 2106.03, or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
101 Analysis – Step 1
Claim 1 is directed to a measurement system of a work machine (i.e., a product). Therefore, claim 1 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes. see MPEP 2106(A)(II)(1) and MPEP 2106.04(a)-(c)
Independent claim 1 includes limitations that recite an abstract idea (emphasized below [with the category of abstract idea in brackets]) and will be used as a representative claim for the remainder of the 101 rejection.
Claim 1 recites:
A measurement system of a work machine, the measurement system comprising:
at least one processor, wherein the at least one processor is configured to:
calculate a position of the work machine (mental process/step) based on detection data of a position sensor;
calculate a position of working equipment provided in the work machine (mental process/step) based on the position of the work machine;
store construction data indicative of each position of a plurality of points predetermined at a work site of the work machine;
acquire input data generated by an operation of an input device;
select a first point from the plurality of points in response to a point being designated
on a measurement screen displayed on a display device; and
calculate a distance between the position of the selected first point and a position of a second point corresponding to the working equipment (mental process/step).
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. For example, “calculate a distance between the position of the selected first point and a position of a second point corresponding to the working equipment…” in the context of this claim encompasses a person (driver) looking at data collected and forming a simple judgement. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). It must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” [with a description of the additional limitations in brackets], while the bolded portions continue to represent the “abstract idea”.):
Claim 1:
A measurement system of a work machine, the measurement system comprising:
at least one processor (generic part of a computer), wherein the at least one processor is configured to:
calculate a position of the work machine (mental process/step) based on detection data of a position sensor (preliminary data gathering);
calculate a position of working equipment provided in the work machine (mental process/step) based on the position of the work machine (what the calculation is based on, still a mental process which can be done in the human mind);
store construction data indicative of each position of a plurality of points predetermined at a work site of the work machine (preliminary gathering and storage of data; note that this covers the case of two points, which is simple enough to be carried out in the human mind);
acquire input data generated by an operation of an input device (data collection);
select a first point from the plurality of points in response to a point being designated
on a measurement screen displayed on a display device (preliminary gathering of data); and
calculate a distance between the position of the selected first point and a position of a second point corresponding to the working equipment (mental process/step).
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application. Regarding the additional limitation of “a processor”, this is a generic part of a computer with no further definition such that it amounts no more than mere instructions to apply the exception using a generic computer component. Regarding the additional limitations of “detection data of a position sensor…,” “store construction data…, acquire input data generated by an operation of an input device …,” and “select a first point from the plurality of points in response to a point being designated on a measurement screen displayed on a display device …,” the examiner submits that these limitations are insignificant extra-solution activities that merely use parts of a computer (processor) to perform the process. In particular, the receiving steps from the sensors and from the input device are recited at a high level of generality (i.e. as a general means of gathering vehicle and environment data for use in the evaluating step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity, or data placement, which could be carried out by the jotting of the data on a piece of paper and which falls under the aegis of being an abstract idea. Note that the “plurality of points” could be satisfied by two points, which is a simple enough situation that it could be carried out in the human mind. The fact that for years excavations have been carried out by humans using their own eyesight for estimating position as where to place the next shovel action of an excavator would indicate the feasibility of such.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception. see MPEP § 2106.05. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to gather together the data and to carry out the calculations amounts to nothing more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. And as discussed above, the additional limitations of “detection data of a position sensor…,” “store construction data…, acquire input data generated by an operation of an input device …,” and “select a first point from the plurality of points in response to a point being designated on a measurement screen displayed on a display device …,” the examiner submits that these limitations are insignificant extra-solution activities. In addition, these additional limitations (and the combination, thereof) amount to no more than what is well-understood, routine and conventional activity. Hence, the claim is not patent eligible.
Dependent claim(s) 2, 4-9 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Claim 2 defines the act of distance calculation in accordance with setting beginning and ending points but does not avoid the 101 issue. Claim 4 defines the data that the construction data storage unit stores more specifically but does not avoid the 101 issue. Claim 5 adds another preliminary data storage activity but does not avoid the 101 issue. Claims 6 and 7 further define distance but does not avoid the 101 issue. Claim 8 adds a display unit which displays the calculated distance, but displaying calculation results is considered simple post-solution activity. Claim 9 adds the element of a work machine containing the measurement system of claim 1. Therefore, dependent claims 2, 4-9 are not patent eligible under the same rationale as provided for in the rejection of claim 1.
Claims 10-11, 13-17:
101 Analysis – Step 1
Claim 10 is directed to a measurement method. Therefore, claim 10 is within at least one of the four statutory categories.
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” [with a description of the additional limitations in brackets], while the bolded portions continue to represent the “abstract idea”):
Claim 10 recites:
A measurement method of a work machine using at least one processor, the method comprising:
calculating a position of the work machine (mental process/step) based on detection data of a position sensor;
calculating a position of working equipment provided in the work machine (mental process/step) based on the position of the work machine;
storing each position of a plurality of points predetermined at a work site of the work machine;
acquiring input data generated by an operation of an input device as a result of a first point being designated on a measurement screen displayed on a display device;
selecting the first point from the plurality of points (mental process/step) based on the input data; and
calculating a distance between the position of the selected first point and a position of a second point corresponding to the position of the working equipment (mental process/step).
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. For example, “calculate a distance between the position of the selected first point and a position of a second point corresponding to the working equipment…” in the context of this claim encompasses a person (driver) looking at data collected and forming a simple judgement. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). It must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” [with a description of the additional limitations in brackets], while the bolded portions continue to represent the “abstract idea”.):
A measurement method of a work machine using at least one processor (generic part of a computer),, the method comprising:
calculating a position of the work machine (mental process/step) based on detection data of a position sensor (preliminary data gathering);
calculating a position of working equipment provided in the work machine (mental process/step) based on the position of the work machine; (preliminary data gathering)
storing each position of a plurality of points predetermined at a work site of the work machine (preliminary data gathering and placement);
acquiring input data generated by an operation of an input device as a result of a first point being designated on a measurement screen displayed on a display device (preliminary data gathering);
selecting the first point from the plurality of points (mental process/step) based on the input data; and
calculating a distance between the position of the selected first point and a position of a second point corresponding to the position of the working equipment (mental process/step).
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application. Regarding the additional limitation of “a processor”, this is a generic part of a computer with no further definition such that it amounts no more than mere instructions to apply the exception using a generic computer component. Regarding the additional limitations of “detection data of a position sensor…,” “storing each position of a plurality of points…"and “selecting a first point from the plurality of points in response to a point being designated on a measurement screen displayed on a display device …,” the examiner submits that these limitations are insignificant extra-solution activities that merely use parts of a computer (processor) to perform the process. In particular, the receiving steps from the sensors and from the input device are recited at a high level of generality (i.e. as a general means of gathering vehicle and environment data for use in the evaluating step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity, or data placement, which could be carried out by the jotting of the data on a piece of paper and which falls under the aegis of being an abstract idea. Note that the “plurality of points” could be satisfied by two points, which is a simple enough situation that it could be carried out in the human mind..
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception. see MPEP § 2106.05. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 10 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to gather together the data and to carry out the calculations amounts to nothing more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. And as discussed above, the additional limitations of “detection data of a position sensor…,” “store construction data…”, “acquiring input data generated by an operation of an input device …,” and “selecting the first point from the plurality of points…,” the examiner submits that these limitations are insignificant extra-solution activities. In addition, these additional limitations (and the combination, thereof) amount to no more than what is well-understood, routine and conventional activity. Hence, the claim is not patent eligible.
Dependent claim(s) 11, 13-17 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Claim 11 defines the act of distance calculation in accordance with setting beginning and ending points but does not avoid the 101 issue. Claim 13 defines the data that the construction data storage unit stores more specifically but does not avoid the 101 issue. Claim 14 adds another preliminary data storage activity but does not avoid the 101 issue. Claims 15 and 16 further define distance but does not avoid the 101 issue. Claim 17 adds a display unit which displays the calculated distance, but displaying calculation results is considered simple post-solution activity. Therefore, dependent claims 11, 13-17 are not patent eligible under the same rationale as provided for in the rejection of claim 10.
Therefore, claim(s) 1-2, 4-11, and 13-17 are ineligible under 35 USC §101.
Allowable Subject Matter
Claims 1, 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 or 35 U.S.C. 101 (pre-AIA ), set forth in this Office action.
Claims 2, 4-9, 13-17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101 or 35 U.S.C. 101 (pre-AIA ), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANYA CHRISTINE SIENKO whose telephone number is (571)272-5816. The examiner can normally be reached Mon - Fri 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kito Robinson can be reached at 571-270-3912. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANYA C SIENKO/Examiner, Art Unit 3664
/KITO R ROBINSON/Supervisory Patent Examiner, Art Unit 3664
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