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 .
Response to Arguments
Applicant’s arguments, see remarks page 8, filed on 10/08/2025, with respect to 35 U.S.C 102(b), (a)(1) rejections regarding claims 21-23, 25-30, 32-34 and 36-38 have been fully considered and are persuasive. The 35 U.S.C 102(a)(1) rejections of claims 21 and 25-27 has been withdrawn.
Applicant’s arguments, see remarks page 8, filed on 10/08/2025, with respect to 35 U.S.C 102(b), (a)(1) rejections regarding claims 28-33 have been fully considered and are moot in view of the amendments.
Applicant’s response/arguments however do not overcome the non-statutory obviousness double patenting rejection made in the last office action mailed on 07/09/2025. Examiner therefore maintains the non-statutory obviousness double patenting rejections to the claims made in the last office action. The rejections are presented below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 28 recites the limitation “the regions” in line 11. There is insufficient antecedent basis for this limitation in the claim. Claims 29-33 depends directly or indirectly on claim 28, therefore they are rejected.
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.
Claims 21 and 25-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4,6,9, and 16-19 of U.S. Patent No.11636605. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims 21 and 25-39 are broader in scope than the allowed claims 1-4,6,9, and 16-19 of US11636605.
Appl # 18303323 US11636605
Claim 21
1+2
Claim 25
1+6+9
Claim 26
1+2+3
Claim 27
1+2+4
Claim 28
16+17+18+19
Claim 29
16+17+18+19
Claim 30
16+17+18+19
Claim 31
16+17+18+19
Claim 32
16+17+18+19 and corresponding claim 3
Claim 33
16+17+18+19 and corresponding claim 4
Claim 34
16 and corresponding 1+2
Claim 35
16+17 and corresponding claims 1+2
Claim 36
16 and corresponding claims 1+2+3
Claim 37
16 and corresponding claims 1+2+3
Claim 38
16 and corresponding claims 1+2+3
Claim 39
16 and corresponding claims 1+2+3
Claims 28-30 and 32-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, and 15-19 of U.S. Patent No.11062457. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims 28-30 and 32-33 are broader and obvious in scope than the allowed claims 4, and 15-19 of US11062457
Appl # 18303323 US11062457
Claim 28
16+17+18+19
Claim 29
16+17+18+19
Claim 30
16+17+18+19
Claim 32
16+17+18+19 and corresponding claim 15
Claim 33
16+17+18+19 and corresponding claim 4
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 28-30 and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chitta et al. (US20170246744) hereafter Chitta.
1. Regarding claim 28, Chitta discloses a robotic system, comprising: at least one processor; and at least one memory device connected to the at least one processor and having stored thereon instructions, executable by the processor (Chitta discloses a robotic system, comprising: at least one processor; and at least one memory device connected to the at least one processor and having stored thereon instructions, executable by the processor, in Figs 1-3 and in paras 0027-0028) for:
receiving one or more image data representative of one or more unregistered objects receiving one (paras 0033, 0038 discloses receiving one or more image data (2D and 3D) image 38 representative of one or more unregistered objects (figs 1-2. Para 0033 shows and discloses the boxes with no a priori knowledge of number, size, orientations and locations of the boxes meeting the limitations of unregistered objects, examiner notes that due to the recital of one or more only one is required to be met);
identifying an exposed corner based on the one or more image data (figs 1-3 and para 0038 shows and discloses an exposed corner (i.e corner 40 determined by the computer vision meet) meeting the claim limitations, examiner notes that the specifics of an exposed corner are not required to be met);
based on the one or more image data and the exposed corner, identify an estimated corner diagonally opposite the exposed corner (fig 2, para 0038 shows and discloses corner 44 (i.e the estimated corner) diagonally opposite the exposed corner 40 meeting the above claim limitations, examiner notes that the specifics of identify and also the diagonally opposite corner are not required by the current claim); and
generating a region based on the exposed corner and the estimated corner, wherein the regions is an estimate of a surface or a portion thereof of one object among the one or more unregistered objects (para 0039 discloses “The system then chooses to move the Gripper 30 using the Robot 28 to the closest corner 40 (i.e the exposed corner) and the estimated corner 44 diagonally opposite as seen in fig 2, overlapping the box 12 in such a computed manner to only overlap box 12 while not overlapping box 14. The system computes the minimal overlap needed to grasp the box on the corner area (i.e the regions is estimate of a surface or a region as a portion thereof one object) using the known smallest possible size of the boxes.” meeting the claim limitations).
2. Regarding claim 29, Chitta discloses the robotic system of claim 28, wherein the at least one memory device includes instructions for: identifying exposed edges corresponding with at least one of the exposed corners (fig 2 shows outside edges (sides of the box 12) corresponding with at least one exposed corner 40 meeting the claim limitations
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); and wherein generating the region includes generating the region based on the exposed corner, the estimated corner, and the exposed edges (para 0039 discloses “The system then chooses to move the Gripper 30 using the Robot 28 to the closest corner 40 (i.e the exposed corner) and the estimated corner 44 diagonally opposite as seen in fig 2, overlapping the box 12 in such a computed manner to only overlap box 12 while not overlapping box 14. The system computes the minimal overlap needed to grasp the box on the corner area (i.e the regions is estimate of a surface or a region as a portion thereof one object) using the known smallest possible size of the boxes.” meeting the claim limitations wherein generating the region includes generating the region based on the exposed corner, the estimated corner, and the exposed edges
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).
3. Regarding claim 30, Chitta discloses the robotic system of claim 29, further comprising: identifying the exposed edges include a first exposed edge and a second exposed edge associated with one of the one or more exposed corner (fig 2 shows identifying the exposed edges include a first exposed edge and a second exposed edge associated with one of the one or more exposed corner
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); and wherein generating the region is based on the first exposed edge, the second exposed edge, the exposed corner associated with the first exposed edge and the second exposed edge, or a combination thereof (para 0039 discloses “The system then chooses to move the Gripper 30 using the Robot 28 to the closest corner 40 (i.e the exposed corner) and the estimated corner 44 diagonally opposite as seen in fig 2, overlapping the box 12 in such a computed manner to only overlap box 12 while not overlapping box 14. The system computes the minimal overlap needed to grasp the box on the corner area (i.e the regions is estimate of a surface or a region as a portion thereof one object) using the known smallest possible size of the boxes.” meeting the claim limitations of wherein generating the region is based on the first exposed edge, the second exposed edge, the exposed corner associated with the first exposed edge and the second exposed edge, or a combination thereof
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).
4. Regarding claim 32, Chitta discloses the robotic system of claim 28, further comprising determining whether one or or a minimum dimension threshold (para 0043 disclose determining a plane corresponding to a size of the top face of the box to fit the best rectangle to the boundary (one or more dimensions of the region satisfy a maximum or a minimum dimension threshold, examiner notes that the specifics of a maximum or a minimum dimension threshold are not required by the current claim).
5. Regarding claim 33, Chitta discloses the robotic system of claim 28, further comprising determining the region based on depth measurements (paras 0037-0039 discloses the method further comprising determining the region based on depth measurements, examiner notes that due to the recital of or only one is required to be met),
Examiner's Note: Examiner has cited figures, and paragraphs in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested for the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. Examiner has also cited references in PTO892 but not relied on, which are relevant and pertinent to the applicant’s disclosure, and may also be reading (anticipatory/obvious) on the claims and claimed limitations. Applicant is advised to consider the references in preparing the response/amendments in-order to expedite the prosecution.
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 JAYESH PATEL whose telephone number is (571)270-1227. The examiner can normally be reached IFW Mon-FRI.
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, Andrew Bee can be reached at 571-270-5183. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAYESH PATEL
Primary Examiner
Art Unit 2677
/JAYESH A PATEL/Primary Examiner, Art Unit 2677
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