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 . Pursuant to communications filed on 28 October 2024, this is a First Action Non-Final Rejection on the Merits. Claims 1-4 are currently pending in the instant application.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 28 October 2024, 05 March 2025 and 26 May 2025, respectively, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) have been considered by the Examiner.
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: “a shape data acquisition section”, “a target position setting section”, “an additional target position setting section” and “a program generation section” as in claim 1; “a position acquisition section” as in claim 2; and “a direction setting section” as in claim 3.
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 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1, a device configured to generate an operation program of a robot, the device comprising:
a shape data acquisition section configured to acquire shape data representing a shape of a workpiece;
a target position setting section configured to set a plurality of target positions at which the robot is to be sequentially positioned for a work onto a work target portion on the workpiece, based on the shape data;
an additional target position setting section configured to automatically set an additional target position at a position separated from a final target position of the plurality of target positions by a predetermined distance in a predetermined extension direction, the final target position being set by the target position setting section so as to correspond to an end of the work target portion in the shape data; and
a program generation section configured to generate the operation program in which the plurality of target positions and the additional target position are defined.
Step 1: Statutory Category – Yes.
The claim(s) recite(s) a device (i.e. a system) configured to generate an operation program of a robot, therefore, the claim(s) fall within one of the four statutory categories. MPEP 2106.03.
Step 2A, Prong One evaluation: Judicial Exception – Yes.
The Office submits that the foregoing bolded limitation(s) constitutes judicial exceptions in terms of “mental processes” because under the broadest reasonable interpretation, the claim covers performance using mental processes.
The claim recites the limitation of “acquire shape data representing a shape of a workpiece”, in the context of this claim is an abstract idea, wherein a human mentally/visually acquires (i.e. receives, observes, obtains, etc.) shape data representing a shape of a workpiece. Humans have the ability to obtain, recognize and interpret data from multiple sources including other humans and machines (a vision sensor in this instance), and therefore the Examiner submits that this action can be done within the human mind.
The claim additionally recites the limitation of “set a plurality of target positions at which the robot is to be sequentially positioned for a work onto a work target portion on the workpiece, based on the shape data”, in the context of this claim is an abstract idea, wherein a human evaluates/determines (i.e. plans) a plurality of target positions at which the robot is to be sequentially positioned for a work onto a work target portion on the workpiece, based on the previously acquired shape data.
The claim additionally recites the limitation of “automatically set an additional target position at a position separated from a final target position of the plurality of target positions by a predetermined distance in a predetermined extension direction, the final target position being set by the target position setting section so as to correspond to an end of the work target portion in the shape data”, in the context of this claim is an abstract idea, wherein a human evaluates/determines (i.e. plans) an additional target position provided at a predetermined distance in a predetermined extension direction from the previously determined final target position.
The claim additionally recites the limitation of “generate the operation program in which the plurality of target positions and the additional target position are defined”, in the context of this claim is an abstract idea, wherein a human can mentally determine/derive (i.e. plan) an operation program, to be implemented by a robot, based on the determined target positions and additional target position that had been previously determined mentally.
Step 2A, Prong Two evaluation: Practical Application – No.
Claim 1, is evaluated whether as a whole it integrates the recited judicial exception into a practical application. As noted in the 2019 PEG, 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.
Regarding the claimed limitation(s)/element(s) of “a shape data acquisition section”, “a target position setting section”, “an additional target position setting section” and “a program generation section”, the Examiner submits that these limitations are simply computing elements that are recited at a high level of generality to which the abstract ideas are applied. These generic computing elements merely automate the abstract idea(s) presented above, without adding significantly more to distinguish themselves, such as by having unique structural components that incorporate features that cannot be done in the human mind. Regarding the claimed “a shape data acquisition section”, “a target position setting section”, “an additional target position setting section” and “a program generation section”, as it is stated in the claim and the specification, are generic computing element(s) that, as stated in paragraphs [0028], [0039], [0045] and [0047] is/are a generic “processor”. Thus for the additional elements of claim 1 analyzed individually, and/or taken as a whole, there is insufficient reasoning as to why the additional elements turn the abstract ideas into practical applications, since the additional elements merely recite automating the abstract ideas. Accordingly the additional limitations(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. Therefore, the claim is ineligible.
Step 2B, evaluation: Inventive Concept – No.
Claim 1, is evaluated as to whether the claims as a whole amount to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim.
With regards to Step 2B of the 101 analysis, claim 1 does not recite any additional elements that amount to significantly more than the judicial exception for the same reasons as described above in Step 2A Prong Two. Specifically, the “a shape data acquisition section”, “a target position setting section”, “an additional target position setting section” and “a program generation section”, as defined in the specification, only recite applying generic computing elements to execute functions of the claim, and therefore do not recite significantly more than the judicial exception. Generally, applying an exception using generic computing element(s) or receiving and interpreting data cannot provide an inventive concept. Thus, since independent claim 1 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that independent claim 1 is directed towards non-statutory subject matter.
Regarding claims 2 and 3, these claims do not recite any further limitations that cause the claim(s) to be directed towards statutory subject matter. The claims merely recite an abstract idea. Each of the further limitations expound upon the abstract idea and do not recite additional elements that are not well understood, routine or conventional. Therefore, claim 2 and 3 are similarly rejected as being directed towards non-statutory subject matter.
Regarding claim 4, a method of generating an operation program of a robot, the method comprising:
acquiring shape data representing a shape of a workpiece;
setting a plurality of target positions at which the robot is to be sequentially positioned for a work onto a work target portion on the workpiece, based on the shape data;
automatically setting an additional target position at a position separated from a final target position of the plurality of target positions by a predetermined distance in a predetermined extension direction, the final target position being set to correspond to an end of the work target portion in the shape data; and
generating the operation program in which the plurality of target positions and the additional target position are defined.
Step 1: Statutory Category – Yes.
The claim(s) recite(s) a method (i.e. a process) of generating an operation program of a robot, therefore, the claim(s) fall within one of the four statutory categories. MPEP 2106.03.
Step 2A, Prong One evaluation: Judicial Exception – Yes.
The Office submits that the foregoing bolded limitation(s) constitutes judicial exceptions in terms of “mental processes” because under the broadest reasonable interpretation, the claim covers performance using mental processes.
The claim recites the limitation of “acquiring shape data representing a shape of a workpiece”, in the context of this claim is an abstract idea, wherein a human mentally/visually acquires (i.e. receives, observes, obtains, etc.) shape data representing a shape of a workpiece. Humans have the ability to obtain, recognize and interpret data from multiple sources including other humans and machines (a vision sensor in this instance), and therefore the Examiner submits that this action can be done within the human mind.
The claim additionally recites the limitation of “setting a plurality of target positions at which the robot is to be sequentially positioned for a work onto a work target portion on the workpiece, based on the shape data”, in the context of this claim is an abstract idea, wherein a human evaluates/determines (i.e. plans) a plurality of target positions at which the robot is to be sequentially positioned for a work onto a work target portion on the workpiece, based on the previously acquired shape data.
The claim additionally recites the limitation of “automatically setting an additional target position at a position separated from a final target position of the plurality of target positions by a predetermined distance in a predetermined extension direction, the final target position being set by the target position setting section so as to correspond to an end of the work target portion in the shape data”, in the context of this claim is an abstract idea, wherein a human evaluates/determines (i.e. plans) an additional target position provided at a predetermined distance in a predetermined extension direction from the previously determined final target position.
The claim additionally recites the limitation of “generating the operation program in which the plurality of target positions and the additional target position are defined”, in the context of this claim is an abstract idea, wherein a human can mentally determine/derive (i.e. plan) an operation program, to be implemented by a robot, based on the determined target positions and additional target position that had been previously determined mentally.
Step 2A, Prong Two evaluation: Practical Application – No.
Claim 4, is evaluated whether as a whole it integrates the recited judicial exception into a practical application. As noted in the 2019 PEG, 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.
In the present case, there are no additional element currently provided in the claim limitations to integrate the abstract idea into a practical application because there are no additional elements that would impose any meaningful limit on practicing the abstract idea. Therefore, the claim is ineligible.
Step 2B, evaluation: Inventive Concept – No.
Claim 4 is evaluated as to whether the claims as a whole amount to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim.
As discussed with respect to Step 2A, Prong Two, there are no additional elements currently provided in the claim limitation(s). The same analysis applies here in Step 2B, i.e., since there are no additional elements currently provided in the claim limitation(s) the judicial exception cannot be integrated into a practical application at Step 2A or provide an inventive concept in Step 2B. Thus, since independent claim 4 is: (a) directed toward an abstract idea, (b) does not recite additional elements that integrate the judicial exception into a practical application, and (c) does not recite additional elements that amount to significantly more than the judicial exception, it is clear that independent claim 4 is directed towards non-statutory subject matter.
Examiner notes wherein the 101 rejection would be overcome by incorporating a final limitation in each of the respective independent claims that “causes the robot to execute a work in accordance with the operation program”, or something similar to the supported teaching(s), as detailed/provided in at least paragraphs 0040, 0046 and 0050 of Applicant’s specification.
Allowable Subject Matter
Claims 1-4 are allowable over the prior art. Specifically, the prior art fails to teach a device configured to generate an operation program of a robot, the device specifically including,
“a target position setting section configured to set a plurality of target positions at which the robot is to be sequentially positioned for a work onto a work target portion on the workpiece, based on the shape data;
an additional target position setting section configured to automatically set an additional target position at a position separated from a final target position of the plurality of target positions by a predetermined distance in a predetermined extension direction, the final target position being set by the target position setting section so as to correspond to an end of the work target portion in the shape data”, which when combined with the other currently provided claim limitations, teaches a device and corresponding method that reliably completes a work function (i.e. deburring, welding, etc.) more accurately up to an end of a work target portion of a workpiece and preventing a portion near the end of the workpiece from being unworked, thereby improving the finish quality of said workpiece.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892 – Notice of References Cited form. Examiner additionally notes the following prior art references, in the same field of endeavor as the instant invention and also appear to teach similar concepts as provided in the above currently provided claim limitations;
US 5,761,390, issued to Koshishiba et al, which is directed towards a robot for removing (i.e. deburring) an unnecessary portion on a workpiece, based on an identified trajectory and shape of a surface of said workpiece; and
US 9,694,495 B1 & US 9,186,795 B1, both of which are issued to Edsinger et al, and are both directed towards similar teachings of a robotic manipulator for performing one or more tasks, such as deburring.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN L SAMPLE whose telephone number is (571)270-5925. The examiner can normally be reached Monday-Friday 7:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Mott can be reached at (571)270-5376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN L SAMPLE/Primary Examiner, Art Unit 3657