DETAILED ACTION
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is 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.
Independent claim 19 recites:
“ A method comprising… holding a hand-held gripper…operating a foot pedal…performing an action…operating the foot pedal...” as under abstract idea without significantly more for a pure method to organizing human activity.
Under Step 1 (MPEP 2106.03), applicant’s claim directs to a process method under four categories of the statutory subject matter.
Further, Under Step 2A, Prong One (MPEP 2106.04), applicant’s claim directs to an abstract idea for an ineligible concept as the claim recites one of the enumerated groupings of abstract ideas, (namely mathematical concepts, certain methods of organizing human activity, or mental processes) will be considered to recite an abstract idea.
In this instant case, applicant recited claim limitation directs to an operation method under describing human operator activities exerted upon gripper and foot pedal as the core essence method claiming human activities exerting upon the recited apparatus.
Under Step 2A, Prong Two, applicant recited claim limitation also does not recited additional elements that integrates the judicial exception for the recited claim limitation.
In this instant case, applicant recited claim limitation regarding, “ gripper including an camera…a foot pedal” is deemed to be insignificant extra solution activities where this specific method claiming human operator method in holding…operating…performing…operating…as an activity procedure method being organized.
Under Step 2B (MPEP 2106.05), it is also noted that applicant recited claim limitation does not resulting any special computer/additional element as insignificant extra solution activities in conjunction with the abstract idea discussed above and thus also does not result significantly more than judicial exception and to impose additional meaningful limitation where the claim as whole mainly falls under the method of organizing human activities, namely a method for human operator activity as a procedure method as apparatus exerted upon human operator.
Regarding claim 20, the recited claim limitation further directs limitations under the scope of ineligibility with claim focus under the repeated human operator steps thus also does not produce significantly more out of the scope of the ineligible subject matter.
Step 2A Prong 1: all of the limitations in claim 20 are defined to be pure human operation method exerted upon apparatus as claiming a method for human operator activity as a procedure.
Step 2A Prong 2/Step 2B: There are no additional elements.
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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is/are: “a controller configured to” in claim 1.
In this instant case, applicant recited claim limitation regarding controller directs to a generic placeholder for controller without specific structure performing the function with the term is modified with functional term “configured to” without precedent structure and thus are deemed to be under means plus function.
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 – 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is also noted that dependent claims based upon the rejected claims are also rejected based upon dependency.
Regarding claims 1 and 10, applicant recited claim limitation regarding, “the reception of image data…the reception of image data” does not provide sufficient antecedent basis. Appropriate further correction is required.
Regarding claim 1, applicant recited claim limitation regarding, “controller configured to” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function and the result is inconclusion.
In this instant case, the recited means plus function within applicant’s written description in Paragraph 0031 and 0032 states processor 416 executing machine readable instructions and processor 406 executing machine readable instructions as general purpose computer/microprocessor without revealing specific structures and thus are rejected under 35 U.S.C 112(b).
Please also see MPEP 2181.II.B. for a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008).
See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’") (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)).
In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012); Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ian JEN whose telephone number is (571)270-3274. The examiner can normally be reached 11AM - 7PM.
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/Ian Jen/Primary Examiner, Art Unit 3657
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