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 .
Terminal Disclaimer
The terminal disclaimer filed on 07/07/2026 has been approved. Therefore, rejection presented to claims 1-15 under non statutory double patenting has been withdrawn.
Response to Arguments
Applicant’s arguments filed 07/06/2026 with respect to claim 16 have been considered and are persuasive. Thackston alone or in combination with Guerin does not teach all the limitations of the claim, specifically:
displaying, in an augmented reality graphical user interface on a display of an augmented reality device, a graphical representation of a portion of the recorded human motions that have not yet been performed, which is superimposed on the environment such that the graphical representation appears within the environment at the plurality of recorded positions of the human in the environment
No art was found through further search that teaches or suggests or renders obvious the
limitations above in combination with the other elements of the claims. Therefore, claim 16 is deemed novel and rejection presented under 35 USC 103 has been withdrawn.
Applicant’s arguments directed towards rejection presented to claim 15 have been fully considered but are not persuasive. Using a graphical user interface to display a virtual representation of robot and receiving user inputs for manipulating the virtual robot is merely a tool to capture data and the data is used to perform an abstract idea of “determining a sequence of robot”. Furthermore the determined sequence is not used to control a physical robot, instead it is merely stored in memory.
Therefore, the abstract idea is not integrated to a practical application. Hence the rejection is maintained.
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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
On January 7, 2019, the USPTO released new examination guidelines setting forth a two-step inquiry for determining whether a claim is directed to non-statutory subject matter. According to the guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), 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:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claim 15 is directed toward non-statutory subject matter, as shown below:
STEP 1: Does claim 15 fall within one of the statutory categories? Claim 15 is directed towards a method, and as such falls within one of the statutory categories.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes, claim 15 is directed to mental processes.
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The method of claim 15 contains a mental process that can be practicably performed in the human mind and, therefore, an abstract idea. A human can determine a sequence of robot motion that shall be performed based on a human input. As an example if a human input is a circular gesture and a recorded motion matches the gesture, a human can determine that a robot should wipe a surface.
Therefore, limitation of “determining, concert with a performance of human motions that match the recorded human motions” is a mental process, hence an abstract idea.
Furthermore, “displaying, in the graphical user interface on the display, during the second time period while the graphical representation of the recorded human motions is displayed, a virtual representation of the robot that is superimposed on the environment and which can be manipulated by the human by providing user inputs” is collecting information, analyzing it and displaying results of collection and analysis. Therefore, is also considered an abstract idea. See Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016).
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No, the claim does not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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 more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Claim 15 does not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. Also, as noted above, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea is indicative that the judicial exception has not been integrated into a practical application.
The steps identified in step 2A prong 1 are performed by a processor. Thus, it is clear that the abstract idea is merely implemented on a computer, which is indicative of the abstract idea having not been integrated into a practical application. See MPEP 2106.05(f).
Furthermore, the steps performed by controller above are performed “recording, with at least one sensor, during a first time period, human motions of a human as the human demonstrates the human-robot collaborative task in an environment, the recorded human motions including a plurality of recorded positions of the human in the environment over a period of time” and “receiving, via a user interface, during the second time period, user inputs defining manipulations of the virtual representation of the robot, the manipulations being graphically represented by the virtual representation of the robot”, this is mere data gathering, hence an insignificant extra solution activity. See MPEP 2106.05(g).
Furthermore, “storing, in a memory, the recorded human motions and the sequence of robot motions to be performed by the robot” is storing information in memory, and is an insignificant extra solution activity. See Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claim 15 does not recite any specific limitation or combination of limitations that are not well-understood, routine, conventional (WURC) activity in the field. Limitations identified as “apply it” in step 2A qualify as apply it in step 2B as well.
With respect to “recording, with at least one sensor, during a first time period, human motions of a human as the human demonstrates the human-robot collaborative task in an environment, the recorded human motions including a plurality of recorded positions of the human in the environment over a period of time”, this is receiving or transmitting data. And as such has been recognized as well-understood routine and conventional. See MPEP 2106.05(d).
Furthermore, “storing, in a memory, the recorded human motions and the sequence of robot motions to be performed by the robot” is storing information in memory, and is recognized a well understood routing and conventional activity. See MPEP 2106.05(d).
CONCLUSION
Thus, since claim 15 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 claim 15 is directed towards non-statutory subject matter.
Allowable Subject Matter
Claims 1-14 and 16-20 are allowed.
Conclusion
THIS ACTION IS MADE FINAL. 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 ARSLAN AZHAR whose telephone number is (571)270-1703. The examiner can normally be reached Mon-Fri 7:30 - 5:30.
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/ARSLAN AZHAR/Examiner, Art Unit 3656
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