DETAILED ACTION
This Office action is in response to application filed on 3/25/2025. Claim(s) 1-12 is/are pending.
Examiner Notes
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. The examiner has found and indicated numerous typographical errors in the specification as explained in this Office action. Applicant is required to correct any errors of which applicant may become aware in the specification.
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because of the numerous drawing objections in this Office action. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
- reference character “30” has been used to designate both “control system 30” and “general public road environment 30”.
- reference character “31” has been used to designate both “computing device 31” and “autonomous driving vehicle 31”.
- reference character “32” has been used to designate both “ODD deviation determining unit 32” and “traffic light”.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
- “general public road environment 40”.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
- “30” in Fig. 10.
- “traffic light 42”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
- The specification refers to both “computing device 11a” and “control device 11a”, while the drawings show “control device 11’” (Fig. 7).
- The specification refers to “a general public road environment 40 as illustrated in FIG. 10”, but this component does not exist in Fig 10.
- The specification refers to “FIG. 10 has the traffic light 42”, but this component does not exist in Fig 10.
Appropriate correction is required.
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:
“an area environment data generating unit” in claim(s) 1, described in Applicant’s specification as “The area environment data generating unit 3 is configured by the data collecting unit 3a, an area digital map generating unit 3b, and a service providing area specifying unit 3c.”, [0025], “The design support system 1 of FIG. 1 has an area environment data generating unit 3”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“area digital map generating unit” in claim(s) 1, 9, 12, described in Applicant’s specification as “The area environment data generating unit 3 is configured by…an area digital map generating unit 3b”, [0025], “The design support system 1 of FIG. 1 has an area environment data generating unit 3”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“autonomous driving ODD automatic defining unit” in claim(s) 1-2, 7, described in Applicant’s specification as “The design support system 1 of FIG. 1 has…an autonomous driving ODD automatic defining unit 7”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“an ODD adjusting unit” in claim(s) 1, described in Applicant’s specification as “The design support system 1 of FIG. 1 has…an ODD adjusting unit 8”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“an autonomous driving control system evaluating unit” in claim(s) 1, described in Applicant’s specification as “The design support system 1 of FIG. 1 has…an autonomous driving control system evaluating unit 5”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“a KPI evaluating unit” in claim(s) 1, described in Applicant’s specification as “The design support system 1 of FIG. 1 has…a KPI evaluating unit 95”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“an operation scenario generating unit” in claim(s) 6, described in Applicant’s specification as “The autonomous driving control system evaluating unit 5 illustrated in FIG. 1 has an operation scenario generating unit 5b”, [0053], “The design support system 1 of FIG. 1 has…an autonomous driving control system evaluating unit 5”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“an operation environment changing unit” in claim(s) 7, described in Applicant’s specification as “The autonomous driving ODD automatic defining unit 7 in FIG. 1 has an operation environment characteristic extracting unit 7a and an operation environment changing unit 7b.”, [0037], “The design support system 1 of FIG. 1 has…an autonomous driving ODD automatic defining unit 7”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“an environment change detecting unit” in claim(s) 9, described in Applicant’s specification as “First, in the second embodiment, an environment change detecting unit 3d is newly provided in the area data collecting unit 3a in FIG. 1.”, [0080], “The area environment data generating unit 3 is configured by the data collecting unit 3a, an area digital map generating unit 3b, and a service providing area specifying unit 3c.”, [0025], “The design support system 1 of FIG. 1 has an area environment data generating unit 3”, [0018], “The design support system 1 configured by a computing device is a system realizing a design support method by holding, in an internal ROM, a design support program which automatically designs an ODD of an autonomous driving vehicle and executing a process according to the program by a CPU”, [0019].
“a computing unit” in claim(s) 11.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
A claim limitation expressed in means- (or step-) plus-function language "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112(f). "If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the 35 U.S.C. 112(b) [or the second paragraph of pre-AIA section 112]." In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a), because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention. MPEP 2181, Section IV.
In this case, claim limitation(s) “computing unit” in claim(s) 11 lack(s) an adequate written description as required by 35 U.S.C. 112(a), because the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function. Specifically, the instant specification does not distinguish between the “computing device 11a”, “computing device 31” [0066-0070] and the claimed “computing unit”. Thus, it creates ambiguity as to what the “computing unit” is.
In this case, claim limitation(s) “area digital map generating unit” in claim(s) 12 lack(s) an adequate written description as required by 35 U.S.C. 112(a), because the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function. Specifically, the instant specification describes an “area digital map generating unit 3b” [0025, 0027, 0036, 0038] but does not describe how the claimed “area environment data generating program” contains the “area digital map generating unit”, as claimed. Thus, it creates ambiguity as to how the “area digital map generating unit” performs its claimed function.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-12 is/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 pre-AIA the applicant regards as the invention.
Claim(s) 1, and similarly claim 12, recite(s) the limitation "the value of the customer request evaluation expression computed and output by the KPI evaluating unit". There is insufficient antecedent basis for "the value of the customer request evaluation expression computed and output by the KPI evaluating unit" in the claim(s), and thus, the claim(s) is/are indefinite. See MPEP 2173.05(e). Specifically, the limitation “a KPI evaluating unit which generates a customer request evaluation expression…” recites that “outputs the operational design domain and a key performance indicator of the customer”, but does not recite outputting “value of the customer request evaluation expression”.
Regarding claim(s) 1, and similarly claims 11-12, it is unclear whether the “a key performance indicator of the customer” recited at the beginning of the “a KPI evaluating unit which generates a customer request evaluation expression…” limitation is the “a key performance indicator of the customer” recited at the end of the “a KPI evaluating unit which generates a customer request evaluation expression…” limitation, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 3, the term "improvement of an environment in the service providing area" is a relative term which renders the claim indefinite. The term "improvement of an environment" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. One person of ordinary skill in the art could reasonably have a different interpretation of the term than another person of ordinary skill in the art. Therefore, the claim is indefinite.
Regarding claim(s) 3, it is unclear whether the “an environment” in claim 3 is the “an environment” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 5, it is unclear whether the “the operational design domain” in the last line of the claim is the “an operational design domain” recited previously in claim 5 or the “operational design domain” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 5, it is unclear whether the “an autonomous driving control program” in claim 5 is the “an autonomous driving control program” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 5, it is unclear whether the “a digital map” in claim 5 is the “a digital map” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 5, it is unclear whether the “a generated digital map” in claim 5 is the “generates a digital map of the service providing area” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 5, it is unclear whether the “an autonomous driving control system” in claim 5 is the “an autonomous driving control system” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 7, it is unclear whether the “an autonomous driving control program” in claim 7 is the “an autonomous driving control program” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 7, it is unclear whether the “an environment” in claim 7 is the “an environment” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 9, it is unclear whether the “an environment” in claim 9 is the “an environment” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Regarding claim(s) 9, it is unclear whether the “a service providing area” in claim 9 is the “a service providing area” recited in claim 1, or if they’re entirely different components, and thus, the claim is indefinite. For the purposes of examination, the examiner is interpreting them to be the same component.
Claim(s) 10 recite(s) the limitation "the changed autonomous driving control program". There is insufficient antecedent basis for this limitation in the claim(s), and thus, the claim(s) is/are indefinite. See MPEP 2173.05(e). For the purposes of examination, the examiner is interpreting the limitation(s) to be “”, instead.
Claim limitation(s) “computing unit” in claim(s) 11 invoke(s) 35 U.S.C. 112(f). However, as described in the 35 USC 112(a) rejection above, 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. Thus, the claim(s) is/are indefinite.
Claim limitation(s) “area digital map generating unit” in claim(s) 12 invoke(s) 35 U.S.C. 112(f). However, as described in the 35 USC 112(a) rejection above, 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. Further, it is unclear how “an area environment data generating program” can have “an area digital map generating unit”, as claimed, i.e., how a software program can contain a hardware unit. Thus, the claim(s) is/are indefinite.
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);
(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.
Dependent claims inherit rejections of the claims they depend upon.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: See Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIA VORCE whose telephone number is (313) 446-4917. The examiner can normally be reached on Monday-Friday, 9AM-6PM, Central Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Antonucci can be reached at (313) 446-6519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIA VORCE/ Primary Examiner, Art Unit 3666
