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 .
Status of Claims
Claim 16 is amended. Claims 17-22 are original. Claims 1-15 and 23-25 are cancelled. Therefore, claims 16-22 are currently pending and have been considered below.
Response to Amendment
The amendment filed on 11/21/2025 has been entered. Applicant's amendment overcomes the following.
Drawing objections
Existing specification objections
112(b) rejections
Specification
The incorporation by reference of the international patent application PCT/GB2021/050697, filed March 22, 2021 and of the UK patent application GB2004297.4, filed March 25, 2020 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case March 22, 2021, see MPEP 1893.03(b). Therefore, the specification amendment of 09/22/2022 to include the incorporation by reference is new matter, per MPEP 608.01(p). Applicant is advised to remove the phrase “each of which are incorporated herein by reference in its entirety” from the specification.
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:
“A spray unit” in line 6 of claim 16. The limitation appears to include a generic placeholder “unit” coupled with functional language “configured to spray” and the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed 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.
A review of the specification appears to be the corresponding structure described in the specification for 35 U.S.C. 112(f) limitation regarding “A spray unit” in line 6 of claim 16, para. 0053 of the applicant’s disclosure which states “the spray unit 4 includes a spray component 20 that defines a spray orifice 19” The Examiner will interpret this limitation as any orifice, which is defined as “an opening (such as a vent, mouth, or hole) through which something may pass” according to the Merriam-Webster Dictionary, or equivalent 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 § 103
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.
Claims 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hamblin (US 2024/0253075) in view of Manzi (US 9,827,583).
Regarding claim 16, Hamblin discloses a robotic device (Fig. 1, 100; Ab. – “robotic vehicle”) for spraying a thermally insulating material (Para. 0065 – “thermal insulation material”) onto an underside of a floor from within an underfloor cavity of a building (Para. 0081 – “under a floor of a building”; Para. 0109 – “underfloor cavity”), the robotic device comprising:
a chassis (Fig. 1, 102);
a rotatable housing (Fig. 1, 140) mounted to the chassis for rotation about a housing axis (Para. 0104 – “a horizontal rotation axis substantially parallel to a ground surface of the robotic vehicle 100”);
a spray unit (Fig. 1, 142 & Annotated Fig. 12; Annotated Fig. 12 shows the spray unit comprising an orifice, where the spray unit is interpreted in light of 112(f).) mounted to the rotatable housing, the spray unit being configured to spray the thermally insulating material (Para. 0109) in a spraying direction (Annotated Fig. 12); and
a sensor (Fig. 12, 113) the sensor being directed in a sensing direction (Annotated Fig. 12; The sensor is mounted on a different rotatable housing (Fig. 1, 108) as described in Para. 0118.),
wherein the spray unit and the sensor are mounted so that the spraying direction is offset from the sensing direction (Annotated Fig. 12 shows the spraying direction offset from the sensing direction.), such that in a spraying position the spray unit is directed towards the underside of the floor. (Hamblin: Para. 0109; The spray position is the position of the spray unit when spraying insulated material directed to the underside of the floor.);
Hamblin does not disclose a sensor mounted to the rotatable housing; wherein the spray unit and the sensor are mounted to the rotatable housing so that the spraying direction is offset from the sensing direction in a direction of rotation of the rotatable housing such that in a spraying position of the rotatable housing the spray unit is directed towards the underside of the floor and the sensor is directed away from the underside of the floor.
However, Manzi teaches a prior art comparable device (Fig. 1, 200; Col. 9: Ln. 23-25 -– “robot”), comprising a sensor (Fig. 1, 60; Col. 8: Ln. 35-36) mounted to a rotatable housing (Fig. 1, 204; The rotatable housing can rotate about an axis (214).) , wherein a spray unit (Fig. 1, 75; Col. 8: Ln. 8-9 describes the spray unit as a nozzle arranged to deliver a fluid, which inherently has an opening to be able to deliver the fluid.) and the sensor are mounted to the rotatable housing so that a spraying direction (Annotated Fig. 1) is offset from a sensing direction (Annotated Fig. 1), in a direction of rotation (Fig. 1, 214) of the rotatable housing (Annotated Fig. 1 shows offset is in the direction of rotation of rotation of the rotatable housing.).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the known technique (a sensor and spray unit being mounted the same rotatable housing) as taught by Manzi, into the robotic device disclosed by Hamblin to allow for avoidance of possible obstacles (Col. 4: Ln. 46-50), and yielding the predictable result of sensing and spraying from the same rotatable housing. Additionally, one of ordinary skill in the art prior to the filing date of the invention would be motivated to include a sensor and spray unit being mounted the same rotatable housing because it reduces the number of actuators needed on the device allowing for a reduced cost, and simplifying control. Additionally, the robotic device of Hamblin in view of Manzi yields the predictable result of the spray unit and the sensor are mounted to the rotatable housing so that the spraying direction is offset from the sensing direction in a direction of rotation of the rotatable housing, which results in that when the spray unit is in the spraying position, which is a spraying position of the rotatable housing, directed towards the underside of the floor the sensor is directed away from the underside of the floor because the spraying direction is offset from the sensing direction in a direction of rotation of the rotatable housing and therefore when the spray unit is in the spraying position the sensor is directed away from the underside of the floor.
Annotated Figure(s)
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Regarding claim 17, Hamblin in view of Manzi teaches the robotic device as claimed in claim 16.
Hamblin further discloses the robotic device (Fig. 1, 100) wherein the spray unit (Fig. 1, 142) is configured to spray the thermally insulating material (Para. 0109) while the rotatable housing rotates to vary the spraying direction (Rotating the rotatable housing will vary the spraying direction.).
Regarding claim 18, Hamblin in view of Manzi teaches the robotic device as claimed in claim 16.
Hamblin further discloses the robotic device (Fig. 1, 100) wherein the spray unit (Fig. 1, 142) is rotatably mounted (Para. 0104 – “powered rotation of the spray gun 142 about a horizontal rotation axis powered rotation of the spray gun 142 relative to the support plate 144”) to the rotatable housing (Fig. 1, 140) about a spray unit axis (Para. 0104 – “an axis of rotation substantially normal to the support plate 144”), a spray unit axis being perpendicular to the housing axis (Para. 0104).
Regarding claim 19, Hamblin in view of Manzi teaches the robotic device as claimed in claim 18.
Hamblin further discloses the robotic device (Fig. 1, 100) further comprising an actuator (Para. 0104 describes the spray gun being rotated in a motorized fashion which inherently includes a motor, which is an actuator, because the definition of motorized is equipped with a motor according to the Merriam Webster dictionary.) arranged to rotate the spray unit about the spray unit axis (Para. 0104).
Regarding claim 20, Hamblin in view of Manzi teaches the robotic device as claimed in claim 18, wherein the spray unit (Fig. 1, 142) is configured to be rotated about a spray unit axis of rotation during spraying of the thermally insulating material to vary the spraying direction (Para. 0104; Para. 0109).
Regarding claim 21, Hamblin in view of Manzi teaches the robotic device the robotic device as claimed in claim 16.
Hamblin further teaches the robotic device (Fig. 1, 100) wherein the sensor comprises a depth sensor (Fig. 12, 11; A distance sensor is a depth sensor.).
Regarding claim 22, Hamblin in view of Manzi teaches the robotic device as claimed in claim 16, but does not explicitly disclose, wherein the spray unit is detachable from the rotatable housing.
However, Regarding the spray unit being detachable from the rotatable housing, the court has held that making components separable may be considered obvious to a person of ordinary skill in the art. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961), the claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art' s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose." MPEP § 2144.04-V-C.
Furthermore, since applicants have not disclosed that these modifications solve any stated problem or are for any particular purpose and it appears that the device would perform equally well with either design, these modifications are a matter of design choice. Absent a teaching as to criticality of the spray unit being detachable from the rotatable housing this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975). MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 11/21/2025 regarding the 112f interpretation of the term “spray unit” is noted. The prior art continues to read on the limitation of "spray unit" as outlined in the rejection.
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
With respect to applicant’s argument on page 10, namely “it is not clear what the Examiner means by "avoidance of obstacles." However, there is no motivation, suggestion or teaching in either Hamblin or Manzi to make the combination suggested by the Examiner.” However, Manzi recites in Col. 4: Ln. 46-50, which is cited in the office action, “More in detail, on the basis of the signals that are detected by the proximity sensor and/or by the distance sensor, the mobile platform is arranged to move in the working area, for example a painting cabin, avoiding possible obstacles that have been detected,” and thus Manzi provides a motivation to incorporate the references.
With respect to the applicant's arguments on page 10, namely “Manzi discloses an anthropomorphic robot 200 with three pivotally attached and motor- driven bodies (stiff bodies 202, 203, 204). Therefore, Manzi is essentially a 6-axis robotic arm, which has greater degrees of freedom and more actuators than the arrangement in Hamblin, and would thus require more positional sensors to control. So, a person skilled in the art would not have modified Manzi with the teachings of Hamblin to reduce the number of actuators or simplify the mechanisms - it would have had the opposite effect, requiring more actuators and mechanisms,” the Examiner maintains that the proposed combination is reasonable and would provide benefits, both those delineated by the Examiner and potential other benefits, to one of ordinary skill in the art who is faced with the teachings
With respect to the applicant's arguments on pages 10-11, namely “however, it is unclear how the Examiner inferred the sensing or spraying directions from this FIG. 1, especially in light of the disclosure of Manzi. There is nothing in the Figures nor the description of Manzi to suggest anything other than parallel directions. In particular, Figures 8, 9, 10, 12, 13, 14 of Manzi all clearly show the relative positions and orientations of the painting head 70 and the detection device 60, and it is clear from all of these Figures and the accompanying description of Manzi that the painting head 70 and detection device 60 are pointing in the same direction. In other words, they point in the same direction so that the detection device can monitor the application of paint to the object being painted. There is no rotational offset, as claimed.” Firstly, the Examiner has cited Figure 1, not figures 8, 9, 10, 12, 13, 14. Secondly, MPEP § 2125 states “Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972) … When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979).”, the Examiner finds that one having ordinary skill in the art before the effective filing date of the claimed invention would recognize, when faced with Figure 1 of Manzi, that the sensor is mounted to the rotatable housing; and wherein the spray unit and the sensor are mounted to the rotatable housing so that the spraying direction is offset from the sensing direction in a direction of rotation of the rotatable housing.
With respect to the applicant's arguments on pages 10-11, namely, “moreover, claim 16 is amended to further recite that the rotational offset between the spraying direction and the sensing direction is such that in a spraying position of the rotatable housing the spray unit is directed towards the underside of the floor and the sensor is directed away from the underside of the floor. In this way, the sensor is protected against sprayed material that may fall onto the sensor while the spray unit is operated. It is clear that this effect would not be realized by the relative arrangements of the painting head 70 and detection device 60 of Manzi. In particular, during use of the device of Manzi, the detection device 60 is exposed and unprotected from the paint being sprayed. If the painting head 60 were directed upwards, towards an underside of a floor, as claimed, and as per Hamblin, then the detection device 60 would also be directed upwards and paint would necessarily fall on the detection device 60.” Firstly, all benefits of claimed invention need not be explicitly disclosed in reference to render claim unpatentable under 35 USC 103. See In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990). Since the claimed subject matter would have been obvious from the references, it is immaterial that the references do not state the problem or advantage ascribed by applicant. See In re Wiseman, 201 USPQ 658. Secondly, it is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW DOMENIC ONDREJCAK whose telephone number is (571)270-5465. The Examiner can normally be reached Mon - Fri 8:00-5:00 EST.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Arthur Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW DOMENIC ONDREJCAK/ Examiner, Art Unit 3752
January 27, 2026
/ARTHUR O. HALL/ Supervisory Patent Examiner, Art Unit 3752