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 .
Introduction
Claims 1-16 are currently pending in this application and are subject to examination herein.
Information Disclosure Statement
The two (2) information disclosure statements (IDSs) submitted on 11/22/2024 and 07/07/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-5 and 7-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Criteria Step 1
Step 1 of the Alice/Mayo framework considers whether the claims are directed to one of the four statutory classes of invention – method/process, machine/apparatus, manufacture, or composition of matter. Claims 1 and 15 are directed to systems. Claim 8 is directed to a method. Accordingly, the independent claims are each within at least one of the four statutory categories.
Subject Matter Eligibility Criteria Step 2A
Step 2A of the Alice/Mayo framework considers whether claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea (Prong 1) and fail to integrate the abstract idea into a practical application (Prong 2).
Step 2A Prong 1
Regarding Prong One of Step 2A of the Alice/Mayo test (which collectively includes the guidance in the January 7, 2019 Federal Register notice and the October 2019 update issued by the USPTO as now incorporated into the MPEP, as supported by relevant case law), the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. MPEP 2106.04(II)(A)(1). An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: a) certain methods of organizing human activity, b) mental processes, and/or c) mathematical concepts. MPEP 2106.04(a).
Specifically, independent method claim 1 and independent apparatus claim 13 recite the following, with abstract ideas emphasized in bold type. (Additional elements are italicized and analyzed in Prong 2):
A method comprising:
using a computer or computers to:
receive sensor data of one or more canes of a fruit tree, the sensor data being acquired by a sensor or sensors; and
determine the one or more canes each as a cane to be removed or a cane to be retained based on the sensor data.
13. A system comprises:
a sensor or sensors to acquire sensor data of one or more canes of a fruit tree; and
a data processor configured or programmed to determine the one or more canes each as a cane to be removed or a cane to be retained based on the sensor data.
The above limitation(s) in bold type constitute “a mental process” because it is/they are an observation/evaluation/judgment/analysis that can, at the currently claimed high level of generality, be practically performed in the human mind (e.g., with pen and paper) and a “mathematical calculation” because it is an act of calculating using mathematical methods to determine a variable or number.
In regards to the mental process or mathematical calculations recited by
determine the one or more canes each as a cane to be removed or a cane to be retained based on the sensor data, a person could observe the plant (or a dataset of sensor data gathered about the one or more canes of a fruit tree) and identify buds and/or fruits on the canes (or identify datapoints indicating buds and/or fruit on the canes).
determine the one or more canes each as a cane to be removed or a cane to be retained based on the sensor data, a person could observe the plant (or a dataset of sensor data gathered about the one or more canes of a fruit tree) and identify buds and/or fruits on the canes (or identify datapoints indicating buds and/or fruit on the canes).
Step 2A Prong 2
Regarding Prong Two of Step 2A of the Alice/Mayo test, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. As noted at MPEP §2106.04(II)(A)(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 such as 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.” MPEP §2106.05(I)(A).
For the following reasons, the above-identified additional limitations, which are indicated in the italicized portions, when considered as a whole with the limitations reciting the at least one abstract idea, do not integrate the above-noted at least one abstract idea into a practical application.
Regarding the additional limitations of
using a computer or computers to: receive sensor data of one or more canes of a fruit tree, the sensor data being acquired by a sensor or sensors, these additional limitations merely add insignificant extra-solution activity (data gathering) to the at least one abstract idea in a manner that does not meaningfully limit the at least one abstract idea (see MPEP § 2106.05(g)).
a sensor or sensors to acquire sensor data of one or more canes of a fruit tree and a data processor configured or programmed to, these additional limitations merely add insignificant extra-solution activity (data gathering) to the at least one abstract idea in a manner that does not meaningfully limit the at least one abstract idea (see MPEP § 2106.05(g)).
Looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. MPEP §2106.05(I)(A) and §2106.04(II)(A)(2). Therefore, taken either alone or in combination, the additional elements do not integrate the at least one abstract idea into a practical application.
For these reasons, claims 1 and 13 do not recite additional elements that integrate the judicial exception into a practical application. Accordingly, claim 1 is directed to at least one abstract idea.
Subject Matter Eligibility Criteria Step 2B
Regarding Step 2B of the Alice/Mayo test, claims 1 and 13 do 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 reasons the same as those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
Regarding the additional limitations of:
using a computer or computers and a data processor configured or programmed to, these limitations amount to merely using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea amounting to merely instructions for implementation equivalent to “apply it” without significantly more (see MPEP § 2106.05(f)).
Regarding the additional limitations of:
receive sensor data of one or more canes of a fruit tree, the sensor data being acquired by a sensor or sensors and a sensor or sensors to acquire sensor data of one or more canes of a fruit tree, these additional limitations have been reevaluated, and it has been determined that such limitations are well understood, routine, and conventional as they merely consist of data gathering and data outputting which are recited at a high level of generality. See OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); or buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Thus, claims 1 and 13 do not amount to significantly more than the judicial exception.
Dependent Claims
The dependent claims 2-5 and 7-12 do not provide additional elements or a practical application to become eligible under 35 U.S.C. 101.
These limitations recite additional abstract ideas, are extra-solution activity, or part of the abstract idea. They do not constitute a practical application of the abstract idea and do not amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 6-11 and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by French Pat. Pub. No. FR 2994057 A1 to Morcellet) (cited by Applicant in IDS filed on 07/07/2025) (Page and line numbers taken from English-language Translation provided by Applicant in IDS).
Regarding claim 1, Morcellet discloses a method comprising:
using a computer or computers (image processing means 3) (Abstract; Fig. 1; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) to:
receive sensor data (Abstract; Figs. 1-2; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) of one or more canes of a fruit tree (Abstract; Fig. 1; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33), the sensor data (Abstract; Figs. 1-2; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) being acquired by a sensor or sensors (projection means 20 and/or reading and recording means 21) (Abstract; Figs. 1-2; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33); and
determine the one or more canes each as a cane to be removed or a cane to be retained based on the sensor data (P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33).
Regarding claim 4, Morcellet discloses the method of claim 1 (see above). Furthermore, Morcellet discloses a method further comprising:
for each cane having been determined as a cane to be retained, generating cut-point data including information indicating a three-dimensional position of a point where the cane is to be cut off (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, lines 7-33);
wherein the generating the cut-point data for each cane having been determined as a cane to be retained includes:
generating the cut-point data so that each cane having been determined as a cane to be retained includes one or more buds after being cut (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33).
Regarding claim 6, Morcellet discloses the method of claim 4 (see above). Furthermore, Morcellet discloses a method further comprising: inputting the generated cut-point data to a controller (controlling unit/piloting means 30) (Abstract; Fig. 1; P. 4, lines 3-7) configured or programmed to control a three-dimensional position of a cutter (cutting unit 4) (Abstract; Fig. 1; P. 4, lines 3-7; p. 4, line 15 to 21; p. 5, lines 3-9) that cuts a cane of the fruit tree (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33).
Regarding claim 7, Morcellet discloses the method of claim 1 (see above). Furthermore, Morcellet discloses a method further comprising:
for each of the one or more canes,
acquiring a measurement value(s) concerning one or more attributes (e.g., parent branch, level of heredity, thickness of branch in median position between the knot, thickness of the knot, x-y-z coordinates of the arrival node of the branch) (P. 3, lines 38-41; p. 5, lines 11-33); and
determining the one or more canes each as a cane to be removed or a cane to be retained based (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33) on the measurement value(s) (P. 3, lines 38-41; p. 5, lines 11-33).
Regarding claim 8, Morcellet discloses the method of claim 7 (see above). Furthermore, Morcellet discloses a method wherein
the one or more attributes (e.g., parent branch, level of heredity, thickness of branch in median position between the knot, thickness of the knot, x-y-z coordinates of the arrival node of the branch) (P. 3, lines 38-41; p. 5, lines 11-33) include two or more attributes (e.g., parent branch, level of heredity, thickness of branch in median position between the knot, thickness of the knot, x-y-z coordinates of the arrival node of the branch) (P. 3, lines 38-41; p. 5, lines 11-33);
the acquiring a measurement value(s) concerning one or more attributes (P. 3, lines 38-41; p. 5, lines 11-33) includes:
for each of the one or more canes,
acquiring measurement values concerning the two or more attributes (P. 3, lines 38-41; p. 5, lines 11-33); and
the determining the one or more canes each as a cane to be removed or a cane to be retained (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33) includes:
determining the one or more canes each as a cane to be removed or a cane to be retained (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33) based on the measurement values concerning the two or more attributes (P. 3, lines 38-41; p. 5, lines 11-33).
Regarding claim 9, Morcellet discloses the method of claim 1 (see above). Furthermore, Morcellet discloses a method wherein the fruit tree is a grape vine (Abstract; Fig. 1; P. 2, lines 8-31; p. 3, lines 1-24; p. 4, lines 3-30).
Regarding claim 10, Morcellet discloses the method of claim 9 (see above). Furthermore, Morcellet discloses a method further comprising:
acquiring information on a vineyard design of the grape vine (P. 3, lines 7-24; p. 5, lines 7-33);
wherein the determining the one or more canes each as a cane to be removed or a cane to be retained (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, lines 7-33) includes:
determining the one or more canes each as a cane to be removed or a cane to be retained (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33) based on the sensor data (Abstract; Figs. 1-2; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) and the information on the vineyard design of the grape vine (P. 3, lines 7-24; p. 5, lines 7-33).
Regarding claim 11, Morcellet discloses the method of claim 7 (see above). Furthermore, Morcellet discloses a method wherein the fruit tree is a grape vine (Abstract; Fig. 1; P. 2, lines 8-31; p. 3, lines 1-24; p. 4, lines 3-30);
the method further comprises acquiring information on a vineyard design of the grape vine (P. 3, lines 7-24; p. 5, lines 7-33);
the one or more attributes (e.g., parent branch, level of heredity, thickness of branch in median position between the knot, thickness of the knot, x-y-z coordinates of the arrival node of the branch) (P. 3, lines 38-41; p. 5, lines 11-33) includes an attribute having different evaluation criteria depending on the information on the vineyard design of the grape vine (P. 3, lines 7-24; p. 5, lines 7-33); and
the determining the one or more canes each as a cane to be removed or a cane to be retained (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33) includes:
determining the one or more canes each as a cane to be removed or a cane to be retained (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33) based on the measurement value(s) concerning the one or more attributes (e.g., parent branch, level of heredity, thickness of branch in median position between the knot, thickness of the knot, x-y-z coordinates of the arrival node of the branch) (P. 3, lines 38-41; p. 5, lines 11-33) and the information on the vineyard design of the grape vine (P. 3, lines 7-24; p. 5, lines 7-33).
Regarding claim 13, Morcellet discloses a system comprises:
a sensor or sensors (projection means 20 and/or reading and recording means 21) (Abstract; Figs. 1-2; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) to acquire sensor data (Abstract; Figs. 1-2; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) of one or more canes of a fruit tree (Abstract; Fig. 1; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33); and
a data processor (image processing means 3) (Abstract; Fig. 1; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) configured or programmed to determine the one or more canes each as a cane to be removed or a cane to be retained (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33) based on the sensor data (Abstract; Figs. 1-2; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33).
Regarding claim 14, Morcellet discloses the system of claim 13 (see above). Furthermore, Morcellet discloses a system wherein for each cane determined as a cane to be removed, the data processor (image processing means 3) (Abstract; Fig. 1; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) is configured or programmed to generate cut-point data including information indicating a three-dimensional position of a point where the cane is to be cut off (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, lines 7-33); the system further comprises:
a cutter (cutting unit 4) (Abstract; Fig. 1; P. 4, lines 3-7; p. 4, line 15 to 21; p. 5, lines 3-9) to cut a cane of the fruit tree (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33); and
a controller (controlling unit/piloting means 30) (Abstract; Fig. 1; P. 4, lines 3-7) configured or programmed to control a three-dimensional position of the cutter (cutting unit 4) (Abstract; Fig. 1; P. 4, lines 3-7; p. 4, line 15 to 21; p. 5, lines 3-9);
wherein the data processor (image processing means 3) (Abstract; Fig. 1; P. 3, line 1 to p. 3, line 24; p. 3, lines 38-41; p. 3, line 51 to p. 4, line 7; p. 4, lines 21-30; p. 5, lines 6-33) is configured or programmed to input the generated cut-point data to the controller (controlling unit/piloting means 30) (Abstract; Fig. 1; P. 4, lines 3-7); and
the controller (controlling unit/piloting means 30) (Abstract; Fig. 1; P. 4, lines 3-7) is configured or programmed to control the three-dimensional position of the cutter (cutting unit 4) (Abstract; Fig. 1; P. 4, lines 3-7; p. 4, line 15 to 21; p. 5, lines 3-9) based on the cut-point data.
Regarding claim 15, Morcellet discloses the system of claim 14 (see above). Furthermore, Morcellet discloses an agricultural machine (robot) (Abstract; Fig. 1; P. 2, lines 8-11; p. 2, lines 26-43; p. 3, lines 1-24; p. 4, lines 3-40; Claims 1-10) comprising the system of claim 14.
Regarding claim 16, Morcellet discloses the agricultural machine of claim 15 (see above). Furthermore, Morcellet discloses an agricultural machine (robot) (Abstract; Fig. 1; P. 2, lines 8-11; p. 2, lines 26-43; p. 3, lines 1-24; p. 4, lines 3-40; Claims 1-10) further comprising:
an arm (see Annotated Fig. 1 of Morcellet infra) supporting the cutter (cutting unit 4) (Abstract; Fig. 1; P. 4, lines 3-7; p. 4, line 15 to 21; p. 5, lines 3-9), a support (see Annotated Fig. 1 of Morcellet infra) supporting the arm (see Annotated Fig. 1 of Morcellet infra), and a driver (controlling unit/piloting means 30) (Abstract; Fig. 1; P. 4, lines 3-7) to move the support (see Annotated Fig. 1 of Morcellet infra);
wherein the controller (controlling unit/piloting means 30) (Abstract; Fig. 1; P. 4, lines 3-7) is configured or programmed to control the three-dimensional position of the cutter (cutting unit 4) (Abstract; Fig. 1; P. 4, lines 3-7; p. 4, line 15 to 21; p. 5, lines 3-9) by controlling an operation of the arm (see Annotated Fig. 1 of Morcellet infra).
[AltContent: arrow][AltContent: textbox (Support)][AltContent: textbox (Arm)][AltContent: arrow]
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Annotated Fig. 1 of Morcellet.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-3, 5 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morcellet.
Regarding claim 2, Morcellet discloses the method of claim 1 (see above). However, Morcellet does not expressly disclose that the cane(s) determined as a cane(s) to be retained includes a fruiting cane. Morcellet teaches that grapevine pruning is conducted with the aim of limiting the excessive growth of the vine and regulate the production of grapes, qualitatively and quantitatively (P. 2, lines 9-12) and that “[b]y pruning, the winemaker seeks to obtain a good level of production while reducing the number of clusters, which leads to increase their size” (i.e., optimizing the yield on a limited number of canes) (P. 2, lines 13-15). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the disclosure and teachings of Morcellet and common sense to determine that a retained cane or canes includes a fruiting cane because the production of fruit is the objective of the pruning. Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try determining that a fruiting cane is a cane to be retained, since it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious. KSR International Co. v Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1395-97 (2007). As described above, Morcellet teaches a recognized problem or need in the art for improving pruning of grapevines. Moreover, the minimum number of canes required in the claim (2) would have a predictable number of potential solutions to facilitate the recognized problem (e.g., save none, save one or save both). One having ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the disclosure and teachings of Morcellet and common sense to determine that a retained cane or canes includes a fruiting cane.
Regarding claim 3, Morcellet discloses the method of claim 1 (see above). However, Morcellet does not expressly disclose that each cane determined as a cane to be retained is, among the one or more canes, a cane that is expected to bear fruits of a highest quality in that season. Morcellet teaches that grapevine pruning is conducted with the aim of limiting the excessive growth of the vine and regulate the production of grapes, qualitatively and quantitatively (P. 2, lines 9-12) and that “[b]y pruning, the winemaker seeks to obtain a good level of production while reducing the number of clusters, which leads to increase their size” (i.e., optimizing the yield on a limited number of canes) (P. 2, lines 13-15). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the disclosure and teachings of Morcellet and common sense to determine that a cane that is expected to bear fruits of a highest quality in that season should be a retained cane. Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try determining that a cane that is expected to bear fruits of a highest quality in that season is a cane to be retained, since it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious. KSR International Co. v Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1395-97 (2007). As described above, Morcellet teaches a recognized problem or need in the art for improving pruning of grapevines. Moreover, the minimum number of canes required in the claim (2) would have a predictable number of potential solutions to facilitate the recognized problem (e.g., save none, save one or save both). One having ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the disclosure and teachings of Morcellet and common sense to determine that a cane that is expected to bear fruits of a highest quality in that season should be a retained cane.
Regarding claim 5, Morcellet discloses the method of claim 1 (see above). Furthermore, Morcellet discloses a method further comprising:
for each cane determined as a cane to be removed, generating cut-point data including information indicating a three-dimensional position of a point where the cane is to be cut off (Abstract; Fig. 4; P. 2, lines 32-35; p. 3, lines 7-24; p. 4, lines 3-18; p. 4, line 21-30; p. 5, line 7 to p. 5, line 33).
However, Morcellet does not expressly disclose that each cane determined as a cane to be removed does not include any buds after being cut. Morcellet teaches that grapevine pruning is conducted with the aim of limiting the excessive growth of the vine and regulate the production of grapes, qualitatively and quantitatively (P. 2, lines 9-12) and that “[b]y pruning, the winemaker seeks to obtain a good level of production while reducing the number of clusters, which leads to increase their size” (i.e., optimizing the yield on a limited number of canes) (P. 2, lines 13-15). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the disclosure and teachings of Morcellet and common sense to determine that a cane that is expected to bear fruits of a highest quality in that season should be a retained cane. Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try determining that a cane that is expected to bear fruits of a highest quality in that season is a cane to be retained, since it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious. KSR International Co. v Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1395-97 (2007). As described above, Morcellet teaches a recognized problem or need in the art for improving pruning of grapevines. Moreover, the determined canes to be removed would have a predictable number of potential solutions to facilitate the recognized problem (e.g., each cane determined as a cane to be removed does not include any buds after being cut, some canes determined as canes to be removed include one or more buds after being cut, each cane determined as a cane to be removed includes one or more buds after being cut). One having ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the disclosure and teachings of Morcellet and common sense to determine that each cane determined as a cane to be removed does not include any buds after being cut.
Regarding claim 12, Morcellet discloses the method of claim 1 (see above). However, Morcellet does not expressly disclose that the determining the one or more canes each as a cane to be removed or a cane to be retained includes: among the two or more canes, determining that any cane other than the cane(s) determined as a cane(s) to be retained is a cane to be removed. Nevertheless, Morcellet teaches that grapevine pruning is conducted with the aim of limiting the excessive growth of the vine and regulate the production of grapes, qualitatively and quantitatively (P. 2, lines 9-12) and that “[b]y pruning, the winemaker seeks to obtain a good level of production while reducing the number of clusters, which leads to increase their size” (i.e., optimizing the yield on a limited number of canes) (P. 2, lines 13-15). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention and based on the disclosure and teachings of Morcellet and common sense to prune the remaining ones of the two or more canes (which should be noted is an arbitrary number that would be met by selecting two canes, choosing the one with fruit (or determined to be likely to have higher quality fruit during the season) and removing the other one in a clearance pruning/optimization pruning operation). Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try determining that any cane other than the cane(s) determined as a cane(s) to be retained is a cane to be removed, since it has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious. KSR International Co. v Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1395-97 (2007). As described above, Morcellet teaches a recognized problem or need in the art for improving pruning of grapevines. Moreover, the minimum number of canes required in the claim (2) would have a predictable number of potential solutions to facilitate the recognized problem (e.g., save none, save one or save both). One having ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based on the disclosure and teachings of Morcellet and common sense to determine that any cane other than the cane(s) determined as a cane(s) to be retained is a cane to be removed.
Double Patenting
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 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/956,573 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application include all of the limitations of the claims of the instant application and the claims of the instant application are merely broadened.
Claims 1 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/956,569 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application include all of the limitations of the claims of the instant application and the claims of the instant application are merely broadened.
This is a provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Similarly, Claims 1 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/956,556 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application include all of the limitations of the claims of the instant application and the claims of the instant application are merely broadened.
This is a provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Similarly, Claims 1 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/956,577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application include all of the limitations of the claims of the instant application and the claims of the instant application are merely broadened.
This is a provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Similarly, Claims 1 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/956,522 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application include all of the limitations of the claims of the instant application and the claims of the instant application are merely broadened.
This is a provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Similarly, Claims 1 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/956,541 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application include all of the limitations of the claims of the instant application and the claims of the instant application are merely broadened.
This is a provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Pat. No. 2022/0189329 to Rosat et al. discloses a system and method for assisting with the pruning of plants including grapevines. U.S. Pat. No. 10,462,972 to Moore; 8,381,501 to Koselka et al.; and U.S. Pat. Pub. Nos. 2011/0047951 to Moore; 2018/0092304 to Moore; and 2025/0176478 to Fang; and Int’l. Pat. Pub. Nos. WO 2023/170673 A1 to Fridman et al.; WO 2006/063314 to Koselka et al.; relate to robots for agricultural tasks such as fruit tree pruning and/or harvesting. U.S. Pat. No. 3,606,750 to Walker et al. relates to a fruit harvester for harvesting grape clusters from a grapevine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAUDE J BROWN whose telephone number is (571)270-5924. The examiner can normally be reached Mon-Fri 8AM-5PM.
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/CLAUDE J BROWN/Primary Examiner, Art Unit 3671
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