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 .
Summary
Claims 1, 5, 8-10, 12, 14-18, and 20 are pending. Claims 1, 5, 8-10, 12, 14-18, and 20 are rejected herein. This is a Final Rejection as necessitated by the amendment and arguments (hereinafter “the Response”) dated 27 Jan 2026.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 5, 8, 10, 12, 14-16, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over RYU et al. (KR 101486017 B1) in view of SHEMPF et al. (US 2002/0190682), WEISENBERG (US 7,591,901), and DOUGLAS (US 4,537,136). Please note that a machine translation of RYU was included with the office action dated Dec 13, 2023. All references to text in RYU are to that machine translation.
Regarding claims 1, 5, 10-12, and 14-16: RYU discloses: A modular robotic inspection system (FIG. 4), comprising: a first modular robot (one module is shown in FIG. 9), to inspect a plurality of tubulars disposed within a mobile vehicle, wherein each tubular comprises a length having one or more bends (Bends in the tubular are shown in FIG. 4 of RYU. Stating that the tubulars are disposed within a mobile vehicle is only a statement of intended use. If the invention of RYU can be used within a tubular, it can be used within the tubular of a mobile vehicle. This reasoning applies to the wherein clause at the end of claim 12 which also just makes a statement of intended use.), comprising: the first modular robot comprising: a first base (central body in FIG. 9); a first motor (best seen in FIGS. 2 and 3); a first set of wheels (FIG. 9) disposed around the first base, wherein the first set of wheels is coupled to the first base through a first set of extendable arms (FIG. 9 shows the arms extended and retracted.), wherein each one of the first set of wheels is disposed at a distal end of one of the first set of extendable arms (FIG. 2, 3, 9); and a first set of centralizing rollers (Not labeled but around the body in FIG. 9 and also seen around each module in FIG. 10.) disposed around the first base, wherein each one of the first set of centralizing rollers is disposed at a proximal end of one of the first set of extendable arms (FIG. 9); and a second modular robot to inspect the plurality of tubulars (As discussed above, this is a statement of intended use.), comprising: a second base; a second set of wheels disposed around the second base, wherein each of the second set of wheels is coupled to the second base through a second set of extendable arms, wherein each one of second set of wheels is disposed at a distal end of one of the second set of extendable arms; and a second set of centralizing rollers disposed around the second base, wherein each one of the second set of centralizing rollers is disposed at a proximal end of one of the second set of extendable arms (All of the repeated structures are shown in FIG. 12.); and a connecting member disposed between the first modular robot and the second modular robot (FIG. 4 shows many modular robots connected together by connecting members.), wherein the connecting member is a spring (FIG. 8 and page 4 lines 1-8).
RYU does not disclose that the motor is coupled to a first end of the first base and the first motor is operable to actuate the plurality of wheels. Instead, RYU has the motors inside the wheels as shown in FIG. 3.
SHEMPF however does teach a central drive motor (56 in FIG. 6) at a first end of a base with extendable driven arms (52) that each have a drive wheel (28) on the end. This also meets the limitations of claim 14. SHEMPF also teaches a gear train (80 in FIG. 3) to drive the wheels, thus meeting the limitations of claims 5 and 15. Both RYU (FIG. 4) and SHEMPF (FIG. 1) teach many modular robots connected together, thus meeting the limitations of claim 10. SHEMPF also shows in FIG. 6 that the motor 56 is covered thus meeting the limitations of claim 16.
One skilled in the art at the time the application was effectively filed would be motivated to use the central motor of SHEMPF driving all three wheels instead of the distributed motors of RYU because motors are more expensive than gears and only having one motor will be less expensive than having three.
RYU in view of SHEMPF does not teach a base unit comprising a tether, reel, sensor and power source.
WEISENBERG however does teach a base unit (structures described in col. 17 lines 13-30), comprising: a tether (umbilical in col. 17 lines 13-30), wherein the tether is coupled to the first modular robot (col. 17 lines 1-5) and to the base unit (at the reel in col. 17 lines 13-30) and configured to provide electrical communication between the first modular robot and the base unit (Umbilical includes electrical power cable and video communication cable as discussed in col. 7 lines 34-39.); a tether reel (col. 17 lines 13-30); a sensor coupled to the tether reel (encoder in col. 17 lines 13-30) and operable to measure rotation of the tether reel (in order to set the speed as discussed in col. 17 lines 13-30); and a power source (inherent in adjusting the reel speed automatically as discussed in col. 17 lines 13-30), wherein the power source is operable to actuate the tether reel and the sensor (col. 17 lines 13-30). Please note that WEISENBERG also teaches electric motors to power wheels (col. 17 lines 6-12) to move the robot. Please note that “umbilical” and “tether” both refer to a long rope-like connection from a base unit to the robot as discussed in col. 10 lines 45-51.
One skilled in the art at the time the application was effectively filed would be motivated to use the base unit of WEISENBERG to power the robot of RYU (as discussed on page 3 lines 18-23 of RYU which discusses the tethering method) because it makes it possible to power the robot from outside, and therefore the robot does not need a battery. This prevents the robot from being stuck in a conduit due to a dead battery. Furthermore, a tether also provides the advantage of having a way to retrieve the robot if it malfunctions during operation.
RYU discloses that the arms are deployed by pneumatic pressure (pg 4 lines 25-29) instead of springs.
DOUGLAS however teaches springs (28 in FIG. 1 and 68 in FIG. 3) to bias the arms away from the base. Please note that DOUGLAS teaches embodiments with springs (col. 2 lines 3-8) and pneumatic rams (col. 3 lines 25-35). Replacing the pneumatic actuators of RYU with springs would be done on the multiple robots.
One skilled in the art at the time the application was effectively filed would be motivated to use springs instead of pneumatics because they do not require an external power source and are mechanically simpler and therefore less expensive. Furthermore, using springs versus pneumatics is a “Simple Substitution of One Known Element for Another to Obtain Predictable Results” (see MPEP 2143 B). In the present case both structures are known. Springs are taught by DOUGLAS and pneumatics are taught by DOUGLAS and RYU. If either structure is used in the present invention, it will produce the predictable result of the arms being outwardly biased.
Regarding claim 8: RYU discloses: the second modular robot further comprises a borescope camera (pg 2 lines 58-61; pg 4 lines 30-35) disposed at a second end of the second base.
Regarding claims 9, 17, and 18: RYU does not explicitly disclose a mirror for his camera.
DOUGLAS however does teach a mirror (44 in FIG. 1) disposed at the second end of the second base (FIG. 1) and at least partially in a field of view of the borescope camera (40; FIG. 1); and a second motor coupled to the second base and operable to actuate the mirror to rotate (col. 2 lines 44-50).
One skilled in the art at the time the application was effectively filed would be motivated to use the rotating mirror of DOUGLAS with the camera of RYU because it allows the camera to see radially as well as longitudinally (col. 2 lines 44-50 of DOUGLAS) allowing for a wider range of inspection.
Regarding claim 20: RYU discloses: a number of the plurality of centralizing rollers is greater than a number of the plurality of wheels (FIG. 12 shows that for every module that has three driving wheels, there are at least four rollers.).
Response to Amendment
The Applicant has argued (Section I of the Response) that the prior art does disclose “the connecting member is a spring.” This argument has been fully considered and is not persuasive. FIG. 8 and page 4 lines 1-8 of RYU disclose a spring as discussed in the rejections of claims 1 and 12 above.
The Applicant has argued (Section II of the Response) that combining RYU with SCHEMPF to show a robot with a single motor to drive the wheels would render the invention unsatisfactory for its intended purpose. This argument has been fully considered and is not persuasive. The Applicant has asserted that this change would “eliminate the in-wheel structure, prevent independent wheel control, undermine bend navigation, and render the system inoperable for its intended purpose.” The Examiner disagrees with this assertion. There is no evidence or articulated reasoning as to why this would be true. The Examiner maintains the rejection based on the motivation for using fewer motors which would be less expensive. Even if the Applicant’s assertion of a loss of some advantage (such as preventing independent wheel control) were true, to do so to gain another advantage, (such as a less expensive device) is an obvious design tradeoff that is within the capability of the skilled artisan. Furthermore, because the robots of RYU and SCHEMPF are both segmented robots that are capable of traversing pipes with bends in them, it is inaccurate to say that replacing the motor arrangement of one with the motor arrangement of the other would render the robot unsatisfactory for its intended purpose. The intended purpose of both robots is to travel through pipes.
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning (Section III of the Response), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the present case all of the proposed technology is present in the prior art and the features relied upon from the different references are independent systems within the complex assembly of a robot vehicle. The tether system, camera/mirror system, and motors are all independent systems known within the prior art, all with their own purposes and advantages that would be obvious to one skilled in the art for the reasons set forth in the rejections. As an analogy, consider a modern automobile with all of its different features and systems (engine, suspension, electrical, infotainment, safety, etc.). Listing many such known features and systems as a single invention does not make a novel and unobvious invention if the individual features and their purposes are known.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANIEL J KOLB whose telephone number is (571)270-7601. The examiner can normally be reached M-F 9-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JESSICA HAN can be reached at (571) 272-2078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NATHANIEL J KOLB/Examiner, Art Unit 2896