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 .
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:
“Traction arrangement” in claim 1, because (A) the term “arrangement” is a generic placeholder, see above; (B) “defining a ground plane” designates a function performed by the arrangement, and (C) no additional structure is specified, to support the claimed function of “defining a ground plane” – in effect the language is equivalent to a predetermined means for defining a ground plane. Examiner is interpreting “traction arrangement” to be a pair of wheels based on the discussion of “traction arrangement” in at least page 9 lines 14-23 of Applicant’s specification.
“Clutch mechanism” in claim 2, because (A) the term “mechanism” is a generic placeholder, see above; (B) “control the movement of the lower arm section” designates a function performed by the mechanism, and (C) no additional structure is specified, to support the claimed function of “control the movement of the lower arm section” – in effect the language is equivalent to a predetermined means for controlling the movement of the lower arm section. Examiner is interpreting “clutch mechanism” to be any generic clutch based on Figs. 12-13 of Applicant’s drawings and page 17 line 34 through page 18 line 24 of Applicant’s specification.
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.
This application includes one or more claim limitations that use the word “means” or “step” or a generic placeholder but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“Robotic unit” in claims 1 and 8.
“Drive mechanism” in claims 8-9.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN209574563U), attached as a PDF and hereinafter referred to as Shen, in view of Hiroshi et al. (JPS5993287A), attached as a PDF and hereinafter referred to as Hiroshi.
Regarding claim 1, Shen discloses a vacuum cleaning system comprising: a robotic unit (every element shown in Figs. 1 and 2) comprising a main body (Fig. 1 elements 1 and 2241), a traction arrangement (Fig. 2 elements 28) defining a ground plane (see annotated Fig. 2 below), and an articulated arm (Fig. 1 elements 221 and 222), wherein the articulated arm comprises an upper arm section (Fig. 1 element 221) and a lower arm section (Fig. 1 element 222 and the structure which provides the “ball joint” type connection between the articulated arm and the end effector (i.e. cleaning head)), wherein the upper arm section is attached to the main body at a shoulder joint (Fig. 1 elements 2241, where the shoulder joint is a subset of the main body), and wherein the lower arm section is attached to the upper arm section at an elbow joint (Fig. 2 element 223), and wherein an end effector (Fig. 1 element 21) is defined at a distal end of the lower arm section (Fig. 1, 0032 and 0034, where the embodiment where a direct movable connection between the distal end of the lower arm section and the end effector is being used), and wherein the articulated arm is configured such that the end effector is movable angularly about a first axis (see annotated Fig. 2 below) with respect to the elbow joint (0034, where "a movable connection between the cleaning head 21 and the support arm assembly 22 may be a configuration in which the cleaning head 21 and the support arm assembly 22 are disposed similar to a ball joint, thereby achieving a direct movable connection therebetween" means that the end effector is movable angularly about the first axis with respect to the elbow joint since a ball joint provides three degrees of freedom and the structure which makes up the ball joint type connection being a part of the lower arm section means that the articulated arm is configured to allow the end effector to be movable in this way) and is movable linearly along a second axis (see annotated Fig. 2 below) with respect to the elbow joint (0035, where the lower arm section being "extendable and retractable" means that the lower arm portion would move the end effector linearly along the second axis with respect to the elbow joint), wherein the first axis is the same as the second axis (see annotated Fig. 2 below, where examiner notes that when the articulated arm is directly connected to the end effector, the first and second axis will be going through the center of the end effector), wherein the second axis extends along the lower arm section (see annotated Fig. 2 below).
Shen fails to disclose the lower arm section includes a fixed portion and an extensible portion, and wherein the lower arm section is configured so that the extensible portion is able to extend and withdraw along the second axis with respect to the fixed portion in one mode of operation and is able to rotate about the second axis in another mode of operation.
Hiroshi is also concerned with a robotic arm on a robot unit and teaches an arm section includes a fixed portion (Fig. 1 element 18) and an extensible portion (Fig. 1 element 8) that moves with respect to the fixed portion (0001, "Reference numeral 8 denotes a telescopic movable frame which is slidably supported on a guide (not shown) provided on a machine frame 18. A ball screw nut 9 which screws into and strikes the telescopic drive shaft 4 is held by a machine frame 10 of the movable frame 8, so that the movable frame 8 can move in the direction of the solid arrow X by rotation of the telescopic drive shaft 4."). Pursuant of MPEP 2144.06-II, it has been held obvious to substitute equivalents for the same purpose. Shen discloses the invention except that the structure which allows for extension and retraction is not specified instead of the structure which allows for extension and retraction being a fixed portion and an extensible portion that moves with respect to the fixed portion. Hiroshi shows that a structure which allows for extension and retraction being a fixed portion and an extensible portion that moves with respect to the fixed portion is an equivalent structure known in the art. Therefore, because these extensible/retractable types were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to substitute a structure which allows for extension and retraction being a fixed portion and an extensible portion that moves with respect to the fixed portion for a structure which allows for extension and retraction which is not specified.
Modifying the vacuum cleaning system of Shen with the teachings of Hiroshi then yields the lower arm section includes a fixed portion (Hiroshi, Fig. 1 element 18) and an extensible portion (Hiroshi, Fig. 1 element 8) that moves along the second axis with respect to the fixed portion (Hiroshi, 0001, "Reference numeral 8 denotes a telescopic movable frame which is slidably supported on a guide (not shown) provided on a machine frame 18. A ball screw nut 9 which screws into and strikes the telescopic drive shaft 4 is held by a machine frame 10 of the movable frame 8, so that the movable frame 8 can move in the direction of the solid arrow X by rotation of the telescopic drive shaft 4."), and wherein the lower arm section is configured so that the extensible portion is able to extend and withdraw along the second axis in one mode of operation (Hiroshi, 0001, where the clutch and brake device being turned on corresponds to one mode of operation where the extensible portion is able to extend and withdraw along the second axis) and is able to rotate about the arm axis in another mode of operation (Hiroshi, 0001, where the clutch and brake device being turned off corresponds to another mode of operation where the extensible portion is able to rotate about the second axis).
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Regarding claim 6, Shen, as modified, discloses the limitations of claim 3, as described above, and further discloses the lower arm section is configured such that the extensible portion moves telescopically with respect to the fixed portion (Hiroshi, 0001, "Reference numeral 8 denotes a telescopic movable frame which is slidably supported on a guide (not shown) provided on a machine frame 18. A ball screw nut 9 which screws into and strikes the telescopic drive shaft 4 is held by a machine frame 10 of the movable frame 8, so that the movable frame 8 can move in the direction of the solid arrow X by rotation of the telescopic drive shaft 4.").
Regarding claim 7, Shen, as modified, discloses the limitations of claim 6, as described above, and further discloses the lower arm section includes a clutch mechanism (Hiroshi, Fig. 1 element 6) to selectively control the movement of the lower arm section between rotational (Hiroshi, 0001, where when the clutch and brake device is turned off the clutch mechanism is disconnected from the drive shaft (4) and allows for rotational movement) and extensible movement (Hiroshi, 0001, where when the clutch and brake device is turned on the clutch mechanism is connected to the drive shaft (4) and allows for extensible movement).
Regarding claim 8, Shen discloses the limitations of claim 1, as described above, and further discloses a drive mechanism (Shen, Fig. 1 elements 2242 and 2232) including at least one drive motor (Shen, Fig. 1 element 2242) provided in the main body of the robotic unit (Shen, Fig. 1, 0041).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN209574563U), attached as a PDF and hereinafter referred to as Shen, in view of Hiroshi et al. (JPS5993287A), attached as a PDF and hereinafter referred to as Hiroshi, and in further view of Song et al. (US20200001468), hereinafter Song.
Regarding claim 4, Shen, as modified, discloses the limitations of claim 1, as described above, but fails to disclose the extensible portion is distal from the elbow joint.
Song is also concerned with a robotic arm on a robot unit and teaches a fixed portion (Fig. 3 element 161) and an extensible portion (Fig. 3 elements 162, 163, and 164), wherein the extensible portion is distal from the elbow joint (Fig. 3 shows the extensible portion (162, 163, and 164) connected to an end effector (120), which corresponds to the end effector (21) of Shen and since the end effector of Shen is distal from the elbow joint, the extensible portion will also be distal from the elbow joint). Pursuant of MPEP 2144.06-II, it has been held obvious to substitute equivalents for the same purpose. Shen, as modified, discloses the invention except that the extensible portion is distal from the elbow joint instead not specifying whether the extensible portion is distal or proximal to the elbow joint. Song shows that the extensible portion being distal from the elbow joint is an equivalent structure known in the art (i.e. both structures allow for extension/retraction). Therefore, because these extension/retraction types were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to substitute a fixed portion and an extensible portion, wherein the extensible portion is distal from the elbow joint for a fixed portion and an extensible portion, wherein the extensible portion positioning in relation to the elbow joint is not specified.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN209574563U), attached as a PDF and hereinafter referred to as Shen, in view of Hiroshi et al. (JPS5993287A), attached as a PDF and hereinafter referred to as Hiroshi, and in further view of Friedrichshafen (DE202004012584U1), attached as a PDF.
Regarding claim 9, Shen, as modified, discloses the limitations of claim 8, as described above, but fails to disclose the drive mechanism includes a transmission to transmit drive from the drive motor to the elbow joint.
Frierichshafen is also concerned with a robotic arm on a robot unit and teaches the drive mechanism (Fig. 2 elements 23, 24, 25, 26, and Fig. 4 elements 29 and 30) includes a transmission (Fig. 2 elements 23, 24, 25, 26, and Fig. 4 element 30) to transmit drive from the drive motor (Fig. 4 element 29) to the elbow joint (Fig. 2, where the joint defined by element 14 corresponds to an elbow joint, 0036-0038). Pursuant of MPEP 2144.06-II, it has been held obvious to substitute equivalents for the same purpose. Shen, as modified, discloses the invention except that the drive mechanism uses two motors, one to drive each joint, instead of a drive mechanism that uses a single motor and a transmission to drive each joint. Frierichshafen shows that a drive mechanism that uses a single motor and a transmission to drive each joint is an equivalent structure known in the art. Therefore, because these drive mechanism types were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to substitute a drive mechanism that uses a single motor and a transmission to drive each joint for a drive mechanism that uses two motors, one to drive each joint.
Regarding claim 10, Shen, as modified, discloses the limitations of claim 9, as described above, and further discloses the transmission is housed at least in part by the upper arm section of the articulated arm (Frierichshafen, Fig. 2, where element 4 corresponds to the upper arm section and at least elements 23 and 24 are housed at least in part by the upper arm section).
Claims 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al. (CN209574563U), attached as a PDF and hereinafter referred to as Shen, in view of Hiroshi et al. (JPS5993287A), attached as a PDF and hereinafter referred to as Hiroshi, and in further view of Horinouchi (US20130330162).
Regarding claim 11, Shen, as modified, discloses the limitations of claim 1, as described above, but fails to disclose the articulated arm is configured so that in a stowed position, the upper arm section and the lower arm section are substantially parallel to one another.
Horinouchi is also concerned with a robotic arm on a robot unit and teaches the articulated arm (Fig. 1 element 14) is configured so that in a stowed position (position shown in Figs. 4 and 5), the upper arm section (Fig. 1 element 14a) and the lower arm section (Fig. 1 element 14b) are substantially parallel to one another (Fig. 4). It 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 to modify the vacuum cleaning system of Shen, as modified, to make the upper and lower arm sections be substantially parallel to one another when in a stowed position, as taught by Horinouchi, because Horinouchi teaches that having the upper and lower arm sections be substantially parallel to one another when in a stowed position provides a more compact robot (0103).
Regarding claim 12, Shen, as modified, discloses the limitations of claim 11, as described above, and further discloses in the stowed position the upper arm section and the lower arm section extend in a direction that is transverse to the ground plane (Horinouchi, see annotated Fig. 5 above).
Regarding claim 13, Shen, as modified, discloses the limitations of claim 12, as described above, and further discloses the upper arm section and the lower arm section extend in a direction that is perpendicular to the ground plane when in the stowed position (Horinouchi, see annotated Fig. 5 above).
Regarding claim 14, Shen, as modified, discloses the limitations of claim 12, as described above, but fails to disclose in the stowed position a portion of the lower arm section is located between a pair of parallel arm members of the upper arm section.
Horinouchi is also concerned with a robotic arm on a robot unit and teaches in the stowed position a portion of the lower arm section is located between a pair of parallel arm members of the upper arm section (see annotated Fig. 1 below, 0052 and 0076). Pursuant of MPEP 2144.06-II, it has been held obvious to substitute equivalents for the same purpose. Shen, as modified, discloses the invention except that the upper arm section has a pair of parallel arms instead of the upper arm section has a single arm. Horinouchi shows that an articulated arm where the upper arm section has a pair of parallel arms is an equivalent structure known in the art (i.e. both provide movement to a lower arm section). Therefore, because these articulated arm types were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to substitute an articulated arm where the upper arm section has a pair of parallel arms for an articulated arm where the upper arm section has a single arm.
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Regarding claim 15, Shen, as modified, discloses the limitations of claim 11, as described above, and further discloses the articulated arm is movable from the stowed position (Horinouchi, position shown in Figs. 4-5) to a fully deployed position (Shen, position shown in Fig. 2), wherein in the fully deployed position the lower arm section extends substantially parallel to the ground plane (Shen, Fig. 2, where the lower arm section is shown to be substantially parallel to the ground plane shown in annotated Fig. 2 above).
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant argues that examiner’s interpretation of the first axis and second axis being coaxial is improper because “movement of the cleaning head 21 would be about and/or along an axis that is laterally offset from the labeled first axis and second axis” (see pages 6-7 of Arguments/Remarks where the proposed offset axis is shown on page 7) and that examiner’s interpretation of the cleaning head being directly coupled to the support arm assembly by a structure which functions as a ball joint is improper because based on Figs. 1-2 of Shen, it is clear that the angular movement is around a different axis (see pages 7-8 of Arguments/Remarks where the proposed axis for angular movement is shown on page 8). Examiner respectfully disagrees. Examiner finds that paragraph 0034 of Shen clearly shows that two separate embodiments are being considered: one where the movable connection between the cleaning head and the support arm assembly is a direct connection (Shen, 0034, “the movable connection between the cleaning head 21 and the support arm assembly 22 can be achieved by setting the cleaning head 21 and the support arm assembly 22 into a structure similar to a ball joint, thereby achieving a direct movable connection between the two”) and another where the movable connection between the cleaning head and the support arm assembly is an indirect connection (Shen, 0034, “In an embodiment of the utility model, as shown in Figures 1 and 2, the vacuum cleaner robot arm 2 also includes a flexible connector 26, one end of the flexible connector 26 is connected to the support arm assembly 22, and the other end of the flexible connector 26 is connected to the cleaning head 21. The flexible connector 26 is used to realize an indirect movable connection between the cleaning head 21 and the support arm assembly 22”). Examiner finds that Applicant’s arguments center around the embodiment involving the indirect movable connection, whereas examiner’s rejection is using the embodiment involving the direct movable connection, therefore examiner finds Applicant’s argument unpersuasive.
Examiner notes that just because drawings are not provided by Shen showing this direct movable connection or the direct connection between cleaning head and the direct connection between the cleaning head and the distal end of the lower arm section discussed in 0032 of Shen as “In other embodiments, dust transmission may also be achieved through the support arm assembly 22 itself (such as by configuring the support arm assembly 22 to be a hollow structure)” does not mean that Shen does not contemplate and disclose these other embodiments. Examiner has relied upon the provided drawings of Shen to annotate and show what this alternate embodiment disclosed by Shen would look like.
Regarding claim 1, Applicant argues that it “is not directly and unambiguously derivable from Shen that a movable connection that results in the support arm 22 and cleaning head 21 being disposed ‘similar to a ball/joint’ would in fact provide the angular movement required by claim 1”. Examiner respectfully disagrees. Examiner finds that on page 6 of the Final Rejection filed 10/1/2025, examiner provided an interpretation stating that “the end effector is movable angularly about the first axis with respect to the elbow joint since a ball joint provides three degrees of freedom and the structure which makes up the ball joint type connection being a part of the lower arm section means that the articulated arm is configured to allow the end effector to be movable in this way”. Applicant has not argued against this interpretation and therefore examiner finds this argument unpersuasive.
Regarding claim 1, Applicant argues that Shen fails to disclose that the end effector is “movable linearly along a second axis with respect to the elbow joint” as required by claim 1 because paragraph 0035 discusses that the “length” of the first and second support arms are adjustable and that the angular adjustments of the first and second support arms adjusts the “distance between the cleaner head 21 from the body 1” (see page 8 of Arguments/Remarks). Examiner respectfully disagrees. Examiner first finds that examiner was unable to find the quotation ‘the cleaning coverage area can be achieved through the joint support of the first support arm 221 and the second support arm 222, combined with the adjustment of the positions of each connection point.’ used by Applicant from 0035 of Shen. Examiner further finds that Shen in 0035 clearly distinguishes between the “clear coverage area” and “the depth of the first support arm 221 and the second support arm 222 that can be extended into a narrow space”. Examiner finds that the “lengths” of the first and second support arms are discussed entirely separately from the “positions of the joints” being adjusted and discusses that each support arm is “extendable and retractable, so that the extended length can be automatically adjusted as needed” and therefore examiner finds Applicant’s argument unpersuasive.
Applicant argues that Shen cannot teach being “movable linearly along a second axis with respect to the elbow joint” because the examiner themself admitted that Shen fails to disclose “a fixed portion and an extensible portion” and therefore examiner admits that Shen fails to teach a structure which is capable of extending linearly. Examiner respectfully disagrees. Examiner finds that Shen fails to disclose the specific structure which performs the extension, but 0035 of Shen clearly teaches that the end effector is “movable linearly along a second axis with respect to the elbow joint” and therefore Applicant’s argument is unpersuasive.
Examiner notes that the exact structure does not need to be recited by the prior art for the prior art to disclose the capability of extension/retraction.
In response to applicant's argument that it would not have been obvious to one of ordinary skill in the art to modify Shen with the teachings of Hiroshi because Applicant contends that there are only two possibilities for incorporation (neither of which meet the limitations of claim 1), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Examiner finds that one of ordinary skill in the art at the time of filing would have found that it is known in the art of vacuum cleaners to have an end effector which is configured to extend and retract linearly through the use of “a fixed portion and an extensible portion” as taught by Hiroshi, which provides an equivalent structure which performs the same task as Shen (i.e. extending/retracting). Therefore, examiner finds Applicant’s argument unpersuasive.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 CALEB A HOLIZNA whose telephone number is (571)272-5659. The examiner can normally be reached Monday - Friday 8:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.A.H./Examiner, Art Unit 3723 /MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723