DETAILED ACTION
This detailed action is in response to the arguments and amendments filed on January 15, 2026, and any subsequent filings.
Claims 1-18 stand subjected to a restriction requirement. Claims 17 and 18 stand withdrawn from consideration. Claims 19 and 20 have been added. Claims 1-20 are pending.
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 .
Response to Arguments
Election/Restrictions
Applicant argues that the species restriction is improper and traverses (Remarks, Page 7-8 (“Pg”)).
Applicant argues that Claims 1-20 correspond to species 1 while at the same time Claims 5-9 correspond to species 2 and no claims correspond to species 3-6 (Remarks, Pg7). Applicant further argues no serious burden exists in searching as species overlap, the species are in the same classification, and certain species are not in the claims.
As to the argument regarding no claims corresponding to species 3-6, the argument is persuasive. As to the serious burden argument, Applicant has not identified any single classification in which all species may be classified versus the different classifications for each of the species identified by the prior examiner.
Priority
Applicant's arguments filed January 15, 2026 and March 16, 2026 have been fully considered but they are not persuasive.
Applicant has designated the instant application a continuation of prior United States application 16/645,990 (“’990 application”). In the January 15, 2026 response, Applicant argues that while the claim term “cleaning scanner” does not appear verbatim in the ’990 application, the term is supported by paragraphs 9-11 of the ‘990 application (Remarks, Pg8).
The ‘990 application does disclose a scanner but only with respect to using the structure required for and operating principle of suction not all other structures and principles of operation. While embodiments of the specification do not limit the scope of the claims, here the ‘990 application discloses only a single embodiment using a “suction scanner” operating principle (Spec., Pr52, 53, 55). The term “cleaning scanner” is broader than “suction scanner” and nothing in the ‘990 application discloses other embodiments using a cleaning scanner operating under different principles such as a brush, nozzle, jet, spout, washer, sprayer, knife, blade, scraper, wiper, bristle, and the like. Anything other than a suction scanner as disclosed in the ‘990 application does not meet the enablement and written description requirements of 35 USC 112(a) and would require undue experimentation as detailed below. As such, the term “cleaning scanner” is only entitled to the instant application priority date, October 26, 2021. Given all of the independent Claims 1, 16, and 19 reach recite “cleaning scanner,” all the dependent claims except Claim 13 have the same priority date. Claim 13 recites that the cleaning scanner is a suction scanner and thus is afforded the priority date of the ‘990 application.
Applicant’s arguments filed March 16, 2026 identify various paragraphs in the specification as filed as supporting new Claims 19 and 20 (Remarks, Pg2). Claims 19 and 20 each recite a “cleaning scanner” yet that limitation is not present in the cited paragraphs. Instead, the paragraphs cited by Applicant refer only to a “suction scanner” (Spec., Pr30,33,78,83,101-104,106) or a scanner with no identifiable structure or principle of operation that could be construed as a “cleaning scanner” encompassing all structures and principles of operation (Spec., Pr8-11).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the pressure gauge recited in Claim 1, the terminals recited in Claims 5, 9, and 19, and the signaling device recited in Claim 16 must be shown or the features canceled from the claims. Applicant represented during an interview that 105p1 and 105p2 are terminals yet the specification indicates these are lines (Spec., Paragraph 74 (“Pr”)). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
The drawings are objected to because reference character 104 has a lead line and arrow indicating the space inside of filtration chamber 101 yet the specification notes 104 is a suction scanner (Pr52) (see 37 CFR 1.84(q)-(r) regarding lead lines and arrows). 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of at least the following informalities:
Reference character 104m is referred to as both a “main-tube” (e.g., Pr55) and a “moving part” (e.g., Pr58);
Paragraph 54 recites a partial linear offset yet does not indicate what structure this offset applies to;
Paragraph 58 recites “moving corresponds” yet does not indicate what structure this moving applies to;
The term “location-tracker” is referred to as both reference character 106t (Pr62) and reference character 106 (Pr60);
Reference character 106t is referred to as both the “location-tracker” (Pr62) and “outlet port” (Pr60);
Reference character 106p is referred to as both a “moving body” (Pr58) and a “piston” (Pr63);
Claim 1 and paragraph 58 both refer to “an environment” 106c yet paragraphs 63, and 69 each refer to 106c as a “cylinder” and paragraph 85 refers to 106c both as a “piston” and a “cylinder”;
Reference character 104d is referred to as both a “draining-opening” (Pr64) and an “exit-opening” (Pr67); and,
The term “filtration chamber” is referred to as both reference character 101 (Pr52) and reference character 102 (Pr74).
The specification appears replete with these types of inconsistencies and missing information and the entirety of the specification requires detailed review and correction. No new matter should be added.
Claim Objections
Claims 1 and 12 are objected to because of the following informalities:
In Claim 1, an extra space appears between the semicolon and “wherein” in line 6; and,
In Claim 12, the direct article “the” is required before “activation” in line 3 to render the claim grammatically correct.
Appropriate correction is required.
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.
Claims 1-16, 19, and 20 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 claims 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 inventors, at the time the application was filed, had possession of the claimed invention. The specification and drawings provide support for a suction cleaner (see e.g., Figs. 1A-C, Pr12-13,26,41,52,53,55) yet not the claimed cleaning scanner which can include brushes, nozzles, jets, spouts, washers, sprayers, knives, blades, scrapers, wipers, and bristles.
Claims 1-16, 19, and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a suction cleaner, does not reasonably provide enablement for the broader cleaning scanner. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The specification and drawings do not provide sufficient evidence to support enablement of these claims based on the In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), factor analysis below such that undue experimentation would be required to arrive at the claimed invention. As to the breadth of the claims, the claims encompass all types of cleaning using any structure and all principles of operation. As to the nature of the invention and the amount of direct provided by the inventor, the invention claims all types of cleaning structures using any and all principles of operation. As to the state of the prior art, level of ordinary skill, and predictability in the art, no evidence supports or detracts from enablement. As to the existence of working examples, no working examples for all types of cleaning structures using any and all principles of operation have been identified weighing against a finding of enablement. Finally, as to the quantity of experimentation required to make or use the invention, undue experimentation would be required to determine the conditions necessary to make and use all types of cleaning structures using any and all principles of operation.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
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 1-15, 19, and 20 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.
Claim 1 recites that the signal is indicative of a change in pressure within the environment but also indicative of whether the cleaning scanner has completed a linear motion without providing any indication of how a single signal can be indicative of two disparate measurements.
Claim 2 recites “a comparison the fluid pressure being and a threshold” but does not indicate what the fluid is being in order to conduct such a comparison.
In Claim 11, the use of “gauge once reached” renders the claim incomprehensible.
In Claim 19, the term “modifiable” is not defined by the claim and no definition is provided in the specification or drawings rendering the claim indefinite.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
Claim Rejections - 35 USC § 102
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.
Claims 1-12, 14-16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eisen, et al., International Publication No. WO 2019/202582A1 (“Eisen”).
Applicant’s claims are directed towards a device.
As noted by Applicant, “[n]o amendment to the figures or specification, except for the claims, were made” (1/15/2026 Remarks, Pg8) in this continuation of U.S. application 16/645,990. Moreover, the written description in this application, as in the ‘990 application, is an exact copy from Eisen. Because Eisen qualifies as prior art as discussed above, Eisen necessarily discloses all of the claim limitations except “cleaning scanner.” However, the “suction scanner” is a type of cleaning scanner and thus meets the claim limitation. As such Eisen discloses each and every element as set forth in the claims.
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.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 12,274,962. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent and this application contain the same limitations albeit in a different dependency order.
Conclusion
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/PATRICK ORME/Primary Examiner, Art Unit 1779