DETAILED ACTION
Status of the Application
This final office action is in response to Applicant’s amendment received by the Office on 30 March 2025. Claims 1-20 have been presented in the application, of which, claims 2, 5-10, 14-17, 19 are withdrawn, claims 1, 11, 13 are currently amended and claims 3-4, 12, 18 and 20 are original. Accordingly, pending claims 1, 3-4, 11-13, 18-20 are addressed herein.
Response to Arguments
In response to Applicant’s argument(s) and/or amendment(s), the rejection of claims 1, 3, 11-13, 18 and 20 as being anticipated by Brulo et al. (US 2023/0356402 A1) and the rejection of claim 4 as being unpatentable over Brulo et al. in view of Richter et al. (US 6,520,359 B2) have been withdrawn. The provisional double patenting rejection has been maintained because Applicant has not submitted arguments/evidence demonstrating that the claims of the instant application are not obvious over the claims of 18/233,260 nor has Applicant filed a terminal disclaimer. See MPEP 804.
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 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/233,260 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the reference application anticipates all of the limitations in claim 1 of the instant application.
Instant Application 18/239,600 recites:
Reference Application 18/233,260: recites
1. A robot, comprising:
21. A robotic system, comprising:
a communication interface; and a processor coupled to the communication interface and configured to control, via communication sent via the communications interface, a robot comprising
a positioning robot having m degrees of freedom, a first base end, and a first free moving end; and
a positioning robot having m robotically controlled degrees of freedom, a first base end, and a first free moving end and
a manipulator robot having n degrees of freedom, the manipulator robot having a second base end coupled mechanically to the first free moving end of the positioning robot and a second free end configured to have a robotic end effector mounted thereon;
a manipulator robot having n robotically controlled degrees of freedom, the manipulator robot having a second base end coupled mechanically to the first free moving end of the positioning robot and a second free end configured to have a robotic end effector mounted thereon;
wherein the robot is configured to be operated in a first mode of operation, in which the positioning robot is controlled to position move the manipulator robot into a position to perform a task and the manipulator robot is controlled independently of the positioning robot to perform the task; and in a second mode of operation, in which at least a subset of the m degrees of freedom of the positioning robot and at least a subset of the n degrees of freedom of the manipulator robot are controlled together, by a single controller, to perform the task.
wherein processor is configured to control the robot in a first mode of operation, in which the positioning robot is controlled independently of the manipulator robot to move the manipulator robot into a position to perform a task and the manipulator robot is controlled independently of the positioning robot to perform the task; and in a second mode of operation, in which at least a subset of the m degrees of freedom of the positioning robot and at least a subset of the n degrees of freedom of the manipulator robot are controlled together, by a single controller, to perform the task.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 DALE MOYER whose telephone number is (571)270-7821. The examiner can normally be reached Monday-Friday 8am-5pm PT.
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, Khoi H Tran can be reached at 571-272-6919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Dale Moyer/Primary Examiner, Art Unit 3656
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