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 .
Formal Matters
Applicant's response, filed 27 July 2026, has been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Status of Claims
Claim 1-4, 6-11, 13-18, and 20 are currently pending and have been examined.
Claims 1, 6, 8, 13,15, and 20 have been amended.
Claims 5, 12, and 19 have been canceled.
Claims 1-4, 6-11, 13-18, and 20 have been rejected.
Priority
The instant application does not claim the benefit of priority under 35 U.S.C 119(e) or under 35 U.S.C. § 120, 121, or 365(c) to any prior applications. Accordingly, the effective filing date for the instant application is 20 Oct. 2022.
Claim Rejections-35 USC § 112
The following is a quotation 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 1-4, 6-11, 13-18, and 20 are rejected under 35 U.S.C. 112(a) 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, at the time the application was filed, had possession of the claimed invention. An adequate written description for a computer-implemented functional claim limitation contains both the computer and the algorithm that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonable conclude that the inventor possessed the claimed subject matter at the time of filing. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement (MPEP § 2161.01). Independent claims 1, 8, and 15 recite a computer implemented method, software, or program product for creating, by a three-dimensional printer disposed on an unmanned aerial vehicle, one or more sensors configured to measure the one or more required additional measurements.
While the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology, the claims read in light of the specification fail to disclose the algorithm for programing a 3d printer to print any type of sensor needed on an apparatus in sufficient detail. The specification provides no additional details regarding the programing necessary for printing a sensor, only stating the intended outcome of the software (see the instant specification in ¶ 0057-59) to print any determined sensor at any determined place on the apparatus.
Claims 2-4, 6-7, 9-11, 13-14, 16-18, and 20 depend on claims 1, 8, or 15 and do not remedy the written description requirement issues of the independent claims. As dependent claims inherit the deficiencies of the claims they depend on, they are also rejected.
Response to Arguments
Applicant's arguments filed with respect to 35 USC § 112 have been fully considered but they are not persuasive. Applicant asserts that the instant specification expressly describes the claimed analysis, citing portions of the specification. Applicant asserts that the amended claims do not merely recite an intended result of printing any sensor at any location but instead a disclosed sequence by which monitoring system analyzes symptom-tracking data, identifies a potential problem and its propagation, determines additional measurements and locations needed to further evaluate the problem, identifies corresponding sensor types using a knowledge corpus, and communicates with the three-dimensional printer to create sensors corresponding to the identified sensor types. This disclosure reasonably conveys to a person of ordinary skill in the art that Applicant possessed the claimed computer- implemented subject matter at the time of filing. Examiner disagrees that the disclosure adequately describes the computer algorithm to the degree that one of ordinary skill in the art would recognize that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. The amendments presented merely describe in non-functional descriptive language (see MPEP § 2111.04(I) where the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003))). Claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved").
Applicant’s arguments with respect to 35 USC § 103 have been considered and are persuasive regarding the newly added limitations. Therefore, the rejection has been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Robert Stuart-Smith, 3D printing drones work like bees to build and repair structures while flying, Penn Today – Science and Technology (Sept 22, 2022) teaching on 3d printing capabilities of structures by a drone vehicle in the Article Body
Farooqui et al., 3D-Printed Disposable Wireless Sensors with Integrated Microelectronics for Large Area Environmental Monitoring, 2(8) Advances Materials Technologies (May 19, 2017) teaching on 3D printing technology for environmental sensors based on observed needs in the § 2.4. 3D-Printed Circuit Board and System Integration on p. 6 and § 3. Conclusion on p. 7-8
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 JORDAN LYNN JACKSON whose telephone number is (571)272-5389. The examiner can normally be reached Monday-Friday 8:30AM-4:30PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arleen M Vazquez can be reached at 571-272-2619. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORDAN L JACKSON/Primary Examiner, Art Unit 2857
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