DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. This action is responsive to the following communication: a non-provisional Application filed on March 27, 2025 and a Preliminary Amendment filed therewith. This application claims a foreign priority to JP 2022-174261, filed on October 31, 2022 (Certified Copy received on March 27, 2025). Therefore, the effective filing date of the instant claims is presumably October 31, 2022.
Information Disclosure Statement
3. The examiner acknowledges the information disclosure statement (IDS) submitted on March 27, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of the Claims
4. Claims 1-11 are pending in the case; Claims 1, 9, and 10 are independent claims. In the Preliminary Amendment filed on March 27, 2025, Claim 11 was amended. This action is made non-final.
Claim Interpretation – 35 U.S.C. § 112(f)
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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), except as otherwise indicated in the 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), except as otherwise indicated in the 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) 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 excavation-start-position determination unit determining a start position…” in Claims 1 and 10.1
Because this claim limitation is being interpreted under 35 U.S.C. 112(f), it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (see Instant Specification as published (US 2026/0098393 A1), Fig. 2 (element 622), ¶¶ 0048, 0051-52).
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
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.
5. Claims 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-8 are directed to a control device; Claims 9 and 11 are directed to a control method; and Claim 10 is directed to a work machine, therefore, Claims 1-11 meet the requirements to be considered a statutory category (See MPEP § 2106.03).
Step 2A, prong one evaluation:
The abstract ideas (specifically, mental processes and/or mathematical concepts - calculations) in the rejected claims are as follows:
determining a start position of an excavation operation for each single excavation operation on the basis of at least an excavation time required for the excavation operation and a swing time required for a loading swing and a return swing when the excavation operation, a dumping operation, and the loading swing and the return swing between the excavation operation and the dumping operation are automatically performed by the work equipment (Claim 1, and similarly, Claims 9 and 10);
wherein the excavation-start-position determination unit determines a start position of the excavation operation for each single excavation operation on the basis of an estimated value of an excavation amount for the single excavation operation, the excavation time, and the swing time (Claim 2, and similarly, Claims 3 and 4); … determines the start position on the basis of comparison results between the plurality of excavation directions (Claim 5); … estimates the estimated value and the excavation time on the basis of a two-dimensional cross section obtained for each of the excavation directions from a three-dimensional shape of an excavation target in the excavation operation (Claim 6); … calculates an optimal excavation trajectory for each single excavation operation (Claim 7); wherein the excavation trajectory is determined by an angular velocity or a cylinder speed in a time series (Claim 8);
The recited “determining” step is a mental process that can easily be completed in the human mind. While the claims recite that this step is performed at least in part by the excavation-start-position determining unit (i.e., a computer), they do not preclude these steps from practically being performed in the mind. For example, the claims encompass a person (i.e., an excavator machine operator) analyzing a situation (i.e., estimating/observing excavation and swing times), and determining a start position for the next excavation operation. Further steps noted above are further mental processes (or mathematical calculations) that can be completed in the human mind in a similar manner. Therefore, the above-noted claims recite abstract ideas.
The additional elements, found in Claims 1-11, are grouped as follows:
a work machine including a swing body swinging around a swing center and work equipment attached to the swing body (Claim 1, and similarly, Claims 9 and 10);
an excavation-start-position determining unit (Claim 1, and similarly, Claim 10);
obtains the estimated value, the excavation time, and the swing time for a plurality of excavation directions (Claim 5);
remotely controlling a work machine (Claim 11)2;
Step 2A, prong two evaluation:
The additional elements, individually and in combination, fail to integrate the abstract idea into a practical application3. Additional elements of groups (a)-(d) merely apply the abstract idea to a technological environment (see MPEP § 2106.05(h)); additional elements of group (b) merely apply the abstract idea to one or more generic computing components (see MPEP § 2106.05(f)); additional elements of group (c) are insignificant extra-solution activities – specifically, pre-solution activities of collecting/obtaining data (see MPEP § 2106.05(g)).
Step 2B:
The additional elements, individually and in combination, fail to amount to significantly more than the judicial exception because the Office takes Official Notice that they are well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality (see MPEP § 2106.05(d)), or else they are insignificant extra solution activities in the form of data collection and analysis (see MPEP § 2106.05(d)(II), listing numerous court decisions pertaining to observations, evaluations, judgements, and opinions, such as the findings from Electric Power Group (holding that collecting information, analyzing it, and outputting certain results of the collection and analysis was not significantly more than the judicial exception)).
Discussion of Prior Art
6. Claims 1-11 are not rejected under 35 U.S.C. §§ 102/103 (but see § 101 rejection, above), because the prior art of record does not appear to disclose or suggest the combination of steps/features as recited in instant independent claims, namely with respect to “determining a start position of an excavation operation for each single excavation operation on the basis of at least an excavation time required for the excavation operation and a swing time required for a loading swing and a return swing when the excavation operation, a dumping operation, and the loading swing and the return swing between the excavation operation and the dumping operation are automatically performed by the work equipment.”
For example, the prior art of Sano (US 2021/0017738 A1) is directed towards setting a target trajectory for an excavation attachment of a work machine, based on obtained landform information and target excavation volume (see Abstract). Sano teaches that the target trajectory is calculated before each excavation operation is started, where the target trajectory includes the coordinates of the excavation start position and the end position (see Fig. 7 (element F1), ¶¶ 0113-15). However, Sano does not appear to teach or disclose “determining a start position of an excavation operation for each single excavation operation on the basis of at least an excavation time required for the excavation operation and a swing time required for a loading swing and a return swing when the excavation operation, a dumping operation, and the loading swing and the return swing between the excavation operation and the dumping operation are automatically performed by the work equipment,” in the manner recited in the independent claims.
The prior art of Oi et al. (US 12,460,388 B2) is directed towards a control device for a work machine (see Abstract). Oi discloses an excavation start point determination unit that is configured to determine a point on a boundary line or a point above the boundary line as an excavation start point by the work equipment, and to plan excavation so as to prevent earth from being scattered outside the boundary line (see col. 1, line 52 – col. 2, line 8). Oi appears to be silent with respect to “determining a start position of an excavation operation for each single excavation operation on the basis of at least an excavation time required for the excavation operation and a swing time required for a loading swing and a return swing when the excavation operation, a dumping operation, and the loading swing and the return swing between the excavation operation and the dumping operation are automatically performed by the work equipment,” as recited in the instant independent claims.
The prior art of Cheng et al. (US 11,131,084 B2) is directed towards selecting a target excavating point (see Abstract). Cheng discloses that the target excavating point is selected based on an excavating trajectory set of the excavating point in the excavating point set, and material volume of the candidate excavating point in the candidate excavating point set (see Fig. 4, col. 6, line 43 – col. 8, line 28). Cheng does not appear to disclose or suggest “determining a start position of an excavation operation for each single excavation operation on the basis of at least an excavation time required for the excavation operation and a swing time required for a loading swing and a return swing when the excavation operation, a dumping operation, and the loading swing and the return swing between the excavation operation and the dumping operation are automatically performed by the work equipment,” as recited in the instant independent claims.
The prior art of Kim et al. (US 12,618,228 B2) is directed towards controlling an excavator (see Abstract). Kim discloses that the excavator is controlled by performing digging according to determined orientation angles (see Fig. 10, col. 13, lines 44-51). However, Kim does not appear to disclose or suggest “determining a start position of an excavation operation for each single excavation operation on the basis of at least an excavation time required for the excavation operation and a swing time required for a loading swing and a return swing when the excavation operation, a dumping operation, and the loading swing and the return swing between the excavation operation and the dumping operation are automatically performed by the work equipment,” as required by the instant independent claims.
A reference to specific paragraphs, columns, pages, or figures in a cited prior art reference is not limited to preferred embodiments or any specific examples. It is well settled that a prior art reference, in its entirety, must be considered for all that it expressly teaches and fairly suggests to one having ordinary skill in the art. Stated differently, a prior art disclosure reading on a limitation of Applicant's claim cannot be ignored on the ground that other embodiments disclosed were instead cited. Therefore, the Examiner's citation to a specific portion of a single prior art reference is not intended to exclusively dictate, but rather, to demonstrate an exemplary disclosure commensurate with the specific limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275, 277 (CCPA 1968)). In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792,794 n.1,215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DINO KUJUNDZIC whose telephone number is (571)270-5188. The examiner can normally be reached M-F 8am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Worden can be reached on 571-272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DINO KUJUNDZIC/Primary Examiner, Art Unit 3658
1 ”It is noted that the recited limitation uses a generic placeholder (i.e., unit) coupled with functional language (i.e., determining/determination), without reciting sufficient structure to perform the recited function (and the generic placeholder is not preceded by a structural modifier).
2 It is noted that the recited limitation (“for remotely controlling a work machine”) does not appear to integrate the abstract idea into a practical application – it is not clear if/how the step of determining a start position is utilized in “remotely controlling,” or if “remotely controlling” is merely an additional feature of the control method of Claim 9 (see also discussion of FN 3, below).
3 Applicant should consider incorporating automatic control of the work machine feature (or automatically performing the excavation operation) into the independent claims, as described in ¶ 0049 of the Specification as published (US 2026/0098393 A1), in order integrate the abstract into a practical application.
