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 .
Applicant's submission filed on 4/6/26 has been entered. Claims 1-14 and 21 are currently pending examination, claims 15-20 and 22 have been canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-14 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite: “collecting a first one of the objects” and “collecting a second one of objects” with “the first articulated robotic arm”. The closest support in the original disclosure appears to be found at [0028]: “In yet other constructions, the robotic arm 130 can be one of two robotic arms positioned within the arcuate path P—either supported on the same base 132 or a separate base adjacent the base 132. Such a construction enables handling two objects 104 at once so that one robotic arm places a coated work piece into a curing workstation 122 just as a prior work piece is removed by the other robotic arm.” The amended scope of claim 1 requires a first and second robotic arm, and specifically requires that only the first arm is collecting the first and second objects from the loading zone, while the original disclosure to does not adequately teach the level of detail presently articulated in the amended claim (it doesn’t particularly identify which arm collects samples from the loading zone for particular sequence of objects), therefore if fails to comply with the written description requirement.
Claim 1 has been amended to recite: “wherein the second robotic arm does not carry the first object or the second object through the plurality of liquid immersion workstations and the first robotic arm does not deliver the first object or the second object to the unloading zone.”, this is considered a negative limitation. "Any negative limitation or exclusionary proviso must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion.” MPEP 2173.05(i). The closest support in the original disclosure appears to be found at [0028]: “In yet other constructions, the robotic arm 130 can be one of two robotic arms positioned within the arcuate path P—either supported on the same base 132 or a separate base adjacent the base 132. Such a construction enables handling two objects 104 at once so that one robotic arm places a coated work piece into a curing workstation 122 just as a prior work piece is removed by the other robotic arm.” This does not adequately teach the level of detail presently articulated in the amended claim, therefore if fails to comply with the written description requirement.
The other dependent claims do not cure the defects of the claims from which they depend.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-14 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al (JP 2005-034788; machine translation provided and citations directed to herein, hereafter Ishida) in view of Andreae et al (WO 2012/071499; hereafter Andreae), Gilmore et al US 2004/0089231; hereafter Gilmore), Sato et al (US 2010/0200414; hereafter Sato), and Hohenstein (WO 2014/117202; hereafter Hohenstein).
Claims 1 and 12: Ishida teaches a method of processing objects through a coating system (See, for example, abstract, figures), the method comprising:
providing a plurality of liquid immersion workstations, each having a liquid immersion tank (immersion treatment tanks) associated with a coating process (See, for example, Figures, abstract),
the plurality of liquid immersion workstations arranged along a path, wherein the complete coating process defines a first coating process time (See, for example, figures, requisite time to pass articles through coating process would equate to said time);
Ishida further teaches using articulated robot arms as the holding and conveying means for a plurality of samples, including wherein the articulated robot arm lowers the samples into and lifts the samples out of the various liquid immersion baths of the workstations (See, for example, Figures, abstract, pg 2 paragraph 1-3, and pg 5 paragraphs 9 – 12),
It further teaches delivering the first and subsequent, such as second, objects from a final one of the plurality of liquid immersion workstations into a first curing workstation (See, for example Fig 1, 5 ;
Ishida further teaches wherein arcuate alignment of segments of the workstations allows for smaller apparatus footprint, and reduced costs (See, for example, pg 2 5th paragraph), but it does not explicitly teach all of the plurality of liquid immersion workstations are all arranged along a common arcuate path.
Andreae teaches a method of processing objects through a coating system, particularly one comprising a plurality of liquid immersion workstations, each having a series of liquid immersion tanks (See, for example, Figure 4, abstract). Andreae further teaches wherein conventional electrocoating systems comprise a large number of stations, further of a plurality of liquid immersion / holding stations that result in a undesirably large footprint of the manufacturing facility (See, for example, [0005]). To provide for enhanced efficiency and reduced footprint Andreae teaches performing coating and curing processes simultaneously and equally spacing workstations radially about a central conveying holder / arm that conveys each sample along an arcuate path between the workstations and lowers and lifts each sample at each immersion station (See, for example, Fig 2-4, abstract, [0006], [0024-26]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have equally spaced the various workstations of Ishida (inclusive of coating and curing) radially about a central conveying articulated arm to provide for first, second, and subsequent samples to be carried with the articulated robotic arm through the plurality of liquid immersion workstations along the arcuate path, and articulating the robotic arm at each of the plurality of liquid immersion workstations to immerse and subsequently lift the first object as such orientation would predictably provide for a reduction of manufacturing footprint and enhanced efficiency.
Andreae further teaches configuring a loading zone (transfer station) within the arcuate path and collecting the sequentially processed workpieces, inclusive of first, second and subsequent objects with a first articulated robotic arm from said loading zone (See, for example, Fig 4, [0008])).
By combination (above) the articulated robotic arm is the delivering means among stations, Andreae further teaches that timing between curing and coating processes is of concern wherein coating steps of subsequent samples have conventionally been stopped while the preceding sample is cured, negatively influencing efficiency (See, for, example, [0004-0006]), but Ishida in view of Andreae have only taught a single curing workstation, therefore they don’t explicitly teach delivering the first object from a final one of the plurality of liquid immersion workstations into a first curing workstation and delivering the second object from the final one of the plurality of liquid immersion workstations into a second curing workstation using the robotic arm, while the first object remains in the first curing workstation. Gilmore teaches a method of processing objects through a coating system, particularly one comprising an articulated robot delivering samples along an arcuate path between liquid immersion workstations and curing stations (See, for example, Figure 5-7, abstract, [0035-40]). Gilmore further teaches incorporating a plurality of radially arrayed curing stations (such as explicitly two, three, four five or more) about the robot arm, wherein the number of curing ovens can be tailored to align the timing of the curing with duration of the preceding processing as it allows for the processing of more parts, more quickly, accurately and automatically (See, for example, [0038-43]). Gilmore further teaches wherein such accommodation allows for each additional part to be processed through the workstations while the preceding first part is curing in a first curing oven, and wherein the sequential (such as second) part can be inserted into a second curing oven while the first part is being cured in the first oven (See, for example, [0042-43]. Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at least a second curing workstation and delivered the first object from a final one of the plurality of liquid immersion workstations into a first curing workstation of a plurality of curing workstations and delivering the second object from the final one of the plurality of liquid immersion workstations into a second curing workstation using the robotic arm, while the first object remains in the first curing workstation as such an additional curing workstation and the particular routing would predictably allow for successive part processing more quickly, accurately, and automatically.
By the combination above, the first object would remain in the first curing workstation for a first curing cycle time that is longer than the first coating process time, and the first and second object would remain in the respective first and second curing workstations for the (first) curing cycle time (see, for example, above, and Andreae ([0004]-[0006]) wherein the duration of curing the samples is well known to be longer than the coating process (See, for, example, [0004-0006]), and Gilmore ([0038-0043]) similarly identifying the respective longer curing times than the first coating process time).
Ishida in view of Andreae and Gilmore teach the method above including use of articulating robotic hand at the distal end of the robotic arm to hold the first / second / subsequent objects for the immersion processes, but it does not explicitly further teach using the hand to oscillate the first and second object while the robotic arm holds the first / second object immersed in the liquid of the liquid immersion tank of each of the plurality of liquid immersion workstations. Sato teaches method of processing objects through a coating system, particularly one comprising an articulated robot delivering to, during, and between liquid immersion workstations stations (see, for example, figure, abstract). Sato further teaches wherein during immersion processing the robot hand should be oscillated to alter the relative angle of the work and allow trapped air to escape, as well enhance the efficiency and reduce coating time (See, for example, [0034], [0040], [0044], Fig). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated using the hand to oscillate the first and second object while the robotic arm holds the first / second object immersed in the liquid of the liquid immersion tank of each of the plurality of liquid immersion workstations since such oscillation would predictably alter the relative angle of the work and allow trapped air to escape, as well enhance the efficiency and reduce coating time.
Ishida has taught the implementation of multiple robot arms (See, for example, Figures). Gilmore further teaches unloading of the samples is predictably achieved with a robotic arm delivering objects from any of the curing stations to an unloading zone (See, for example, [0039], Fig 7)). As noted above, Andreae further teaches that timing between curing and coating processes is of concern wherein coating steps of subsequent samples have conventionally been stopped while the preceding sample is cured, negatively influencing efficiency (See, for, example, [0004-0006]). By the above combination, the curing and immersion processing are parallel tasks occurring simultaneously. It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at least a second arm for delivering objects, such as first, second, etc, from the first / second curing workstation to the unloading zone since it would involve nothing more than duplication of parts wherein it is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B. And since a robotic arm has been demonstrated as a predictable means for unloading, and the prior arts desire for efficiency and performance of the parallel tasks of immersion and curing would further motivate incorporation of a second arm for unloading as one of ordinary skill in the art would readily appreciate that such an additional arm would predictably assist in reducing / avoiding instances of the above undesired process stoppages, wherein a singular arm may be needed in two places at once (such as occupied with an immersion process while cured samples are needing unloading).
Ishida, Andreae, Gilmore, and Sato teach the method above and further teach wherein the coating process is a complete coating process and the only process of the plurality of liquid immersion workstations (Refer to the rejection of claim 1 above and 5 below, particularly, for example, Ishida pg 2 paragraph 1-3, and pg 5 paragraphs 9 – 12, Fig 1, Fig 5, and Andreae [0002-3], [0026-30] Fig 4,).
Ishida, Adreae, Gilmore, and Sato do not explicitly teach wherein specifically the first robotic arm collects the first and second one of the objects from the loading zone, and wherein the second robotic arm does not carry the first object or the second object through the plurality of liquid immersion workstations and the first robotic arm does not deliver the first object or the second object to the unloading zone. Hohenstein teaches a method of processing samples through a system using robotic arms (See, for example, abstract, figures). Hohenstein further teaches wherein conveyance prior to and including insertion into a heating station can predictably be performed using a first robotic arm (112), and removal and subsequent conveyance of heat treated samples to an unloading zone can predictably be performed by a second robotic arm (114); and wherein such a conveying system is well known in the art (See, for example, Fig 1-4 and 8, pg 7-8, and pg 10-12). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have specialized the first and second robotic arms to specific conveyance functions, including wherein the first robotic arm handles the pick up and processing of all steps prior to curing, and the second robot handles the removal from the curing chambers and subsequent conveyance to an unloading / transfer station as such isolation of function is well known in the art to provide predictable movement of samples into and out of shared heat treatment stations and as one or ordinary skill in the art would readily appreciate that based on the commonly known theory of division of labor; that specialization of tasks within a production environment would lead to increased productivity. Thus by the combination, the first and second objects would be collected from the loading zone via the first articulated robotic arm, and wherein the second robotic arm does not carry the first object or the second object through the plurality of liquid immersion workstations and the first robotic arm does not deliver the first object or the second object to the unloading zone.
Claim 2: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1 above, wherein each of Ishida, Gilmore and Sato have taught the conveyance and holding via a multi axis robotic arm and wrist (See, for example, Ishida Fig 2, Gilmore Fig 5-7, and Sato Fig and [0034]). And Sato has further taught articulating the robotic hand to oscillate the first and second objects includes in each case articulating a wrist joint about multiple degrees of freedom (See, for example, figure, [0034], [0040], [0044] wherein the robotic hand is oscillated at a wrist joint (joint of oscillation) and possesses 6 degrees of freedom to freely move to arbitrary positions and angles).
Claim 3: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1 above and further teaches simultaneously curing a coating applied to the first object in the first curing workstation and curing a coating applied to the second object in the second curing workstation during processing of at least one additional object through the plurality of liquid immersion workstations, following delivery of the second object to the second curing workstation (See, for example, rejection of claim 1 above, and further Gilmore [0038-43]; additionally / alternatively it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated such an additional object processing while the first and second object remains in the first and second curing workstation as Andreae and Gilmore (refer to rejection of claim 1 above) have taught that such simultaneous processing and curing on any multitude of additional simultaneously operating curing workstations would predictably allow for successive part processing more quickly, accurately, and automatically.
Claim 4: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1 above including wherein the conveying means engages the sample at a loading position upstream of the path (arcuate by combination) (See, for example, Ishida, feature “Y” Figs, Andreae “transfer station” , Gilmore Fig 7 feature 84). And further by combination have taught wherein the first robotic arm maintains custody of the first object until delivered into the first curing workstation (See, for example rejection of claim 1 above and Gilmore Fig 7).
Claim 5: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1, they further teach wherein the coating process is an e-coat process, the plurality of liquid immersion workstations including, in order: clean, rinse, conversion coat, rinse, e-coat, and post rinse workstations (See, for example, Ishida pg 2 paragraph 1-3, and pg 5 paragraphs 9 – 12, Fig 1, Fig 5, and Andreae [0002-3], [0026-30] Fig 4,).
Claim 6: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1, they further teach wherein carrying the first object with the first robotic arm through the plurality of liquid immersion workstations includes covering at least a 90-degree span about a first axis on which the arcuate path is centered (See, for example, rejection of claim 1 above and Andreae Fig 4, [0026]).
Claim 7: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1, they further teach wherein the second object directly follows the first object through the plurality of liquid immersion workstations, with no intervening objects therebetween (refer to the rejection of claim 1 above and Gilmore [0038-43] wherein the first sample processed is interpreted as the first object and the immediately next processed sample is interpreted as the second object).
Claim 8: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1 wherein they further teaches the first and second objects are identical unfinished manufactured articles of metal construction (See, for example, Andreae [0002], Fig 2, Gilmore [0038-0045]).
Claim 9: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1 wherein they further teach carrying the first object with the articulated robotic arm through the plurality of liquid immersion workstations along the arcuate path includes indexing the first object by an angle that is repeated between each adjacent pair of liquid immersion workstations of the plurality of liquid immersion workstations (See, for example, Andreae Fig 4, [0026] wherein the stations are preferably uniformly radially spaced, thus the indexing is of the same angle between each).
Claims 10-11: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 9 wherein they further teach wherein delivering the first object from the final liquid immersion workstation into the first curing workstation includes indexing the first object by a whole-number multiple of the angle and delivering the second object from the final liquid immersion workstation into the second curing workstation includes indexing the second object by a whole-number multiple of the angle different than the whole-number multiple of the angle through which the first object is indexed to the first curing workstation. (See, for example, Andreae Fig 4, [0026] wherein the various stations are preferably uniformly radially spaced, thus the indexing is of the same angle between each and Gilmore Fig 7, [0038- 0042], which similarly depicts uniform spacing of curing stations relative to coating stations as well as routing a second sample past the first curing oven to the second for the second sample while curing the first).
Claim 13: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1 above and further teach carrying the first object with the first articulated robotic arm through the plurality of liquid immersion workstations along the arcuate path includes carrying the first object between each successive liquid immersion workstation of the plurality of liquid immersion workstations in one circumferential direction (See, for example, Andreae Fig 4, [0026-30]).
Claim 14: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 13 above and further teach wherein the first object is delivered from the final one of the plurality of liquid immersion workstations into the first curing workstation in the one circumferential direction (See, for example, Andreae Fig 4, [0026-30] and Gilmore Fig 7, [0038-0043]).
Claim 21: Ishida, in view of Andreae, Gilmore , Sato, and Hohenstein teach the method of claim 1 above. Although the claimed configuration is not explicitly provided in a singular reference, refer to the rejections of claims 1 and 9-14 above wherein concepts from at least Andreae and Gilmore have demonstrated it would have been obvious to incorporated arcuate alignment, further full circular alignment (360o) of the processing stations (loading / unloading stations, immersion processing stations, and curing stations) equally spaced radially about a centrally positioned conveyance system as it predictably provides for a reduction of manufacturing footprint, enhanced efficiency, and allow for successive part processing more quickly, accurately, and automatically (see, for example, noted rejections above, Andreae Fig 2-4, abstract, [0006], [0024-26], and Gilmore Figure 5-7, abstract, [0035-43]).
Response to Arguments
Applicant’s cancellation of claim 22 in the amendments filed 4/6/26 have been fully considered and is persuasive with respect to the 35 USC 112 (b) rejection of claim 22, therefore this rejection has been withdrawn.
Applicant's remaining arguments filed 4/6/26 have been fully considered but they are not persuasive.
Applicant argues that the original disclosure has described a system including two processes; coating and curing; wherein a robotic arm is taught to perform distinct tasks of conveying objects through the coating process and depositing objects in the curing workstation, and removing objects from the curing workstation to deliver it to unloading. Applicant then cites [0028] as further support of identifying that only the first arm performs the coating process and only the second arm performs the removing process. And further argues that “a person having ordinary skill in the art would understand Paragraph [0028] of the currently pending specification to be ripe with various examples of how best to manage the two tasks of conveying objects 104 through the coating process and unloading objects 104 from the curing workstation 122 for removal from the system (e.g., the curing process) in an efficient manner… [further] …understand that the first robotic arms have used the work station 122 as a natural division of labor.” The examiner notes that [0028] explicitly states: “In yet other constructions, the robotic arm 130 can be one of two robotic arms positioned within the arcuate path P—either supported on the same base 132 or a separate base adjacent the base 132. Such a construction enables handling two objects 104 at once so that one robotic arm places a coated work piece into a curing workstation 122 just as a prior work piece is removed by the other robotic arm.” The examiner notes that such a teaching only provides support that generally any previously articulated instance of “a robotic arm” within the general disclosure could be performed by “one of two robotic arms”; the only explicit instance of designation of one versus the other appears to occur at instances wherein when a sample needs to be removed from a curing station just prior to insertion of a different sample in the same curing station, each arm can handle one of the two samples. Thus the original disclosure does not restrict or prevent the second arm from performing any particular operation that “a robotic arm” has been taught to perform, rather only wherein the two arms participate in performing separate unloading and loading steps at particular curing oven at instances for joint transference; and there is nothing in the original disclosure specifically requiring in a two arm system that only the first arm is collecting the first and second objects from the loading zone within the full scope of the claim. As such, the examiner does not agree with Applicant “that a person having ordinary skill in the art would understand Paragraph [0028] of the currently pending specification to be ripe with various examples of how best to manage the two tasks of conveying objects 104 through the coating process and unloading objects 104 from the curing workstation 122 for removal from the system (e.g., the curing process) in an efficient manner… [further] …understand that the first robotic arms have used the work station 122 as a natural division of labor.”; since with the exception of joint transfer into the curing workstation, the original disclosure has essentially only described wherein any step or sub-step can be performed by either arm.
Applicant argues (pg 9) that “the introduction of the second robotic arm…is more than mere duplication of parts as it produced a new and unexpected result in the form of a major jump in processing efficiency over earlier bath-style coating systems. More specifically, Applicant has successfully identified that tasking a first robotic arm to carry a first and second object through the plurality of liquid immersion workstations, articulating the first robotic arm at each workstation, and delivering the first and second objects to a first and second curing workstation, respectively, while not having the first robotic arm deliver the first object or the second object to the unloading zone - and while also having a second robotic arm deliver the first and second objects from their respective curing workstations to the unloading zone and not carrying the first or second objects through the plurality of liquid immersion workstations resulted in an unexpectedly large increase in efficiency over earlier designs.” The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). The only mention of the robotic arm of the invention being “one of two robotic arms” occurs over two sentences of [0028]. As described in the above 112(b) rejection and the response to arguments thereto, the original disclosure fails to provide possession of such argued scope; and there is no data or description of unexpected results in conjunction with single arm vs two arm embodiments, nor even a description of each arm performing only those steps to which applicant argues. Thus there is no substantive evidence of unexpected results and the examiner is not convinced by this unsupported argument.
In response to applicant's arguments against the references individually (pg 10-11) (Gilmore fails to teach two robotic arms, Hohenstein does not teach a coating process and fails to teach the concept wherein a first arm is “used for all steps prior to the curing process and not for steps occurring after the curing process.”, and Hohenstein does not teach multiple ovens) one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is over a combination of references not Gilmore or Hohenstein alone. Primary reference Ishida has taught the implementation of multiple robot arms wherein the particular implementation has been dictated by the knowledge gleaned from the collective teaching of combined art (refer to rejection above). Similarly, primary reference Ishida has taught wherein processes of coating through to delivery to curing station can be performed by a common robotic arm. Gilmore has taught the argued deficiency of multiple curing stations and transfer into and out such stations. Thus such teachings are not requisite upon Gilmore or Hohenstein alone, but they are met by considering the teaching of applied combination of art.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning and a lack of motivation (pg 10), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the reasoning and motivation for incorporation of the second robotic arm is gleaned from the collective teaching of combined art itself and the knowledge generally available to one of ordinary skill in the art. The art has demonstrated that robotic arm(s) are predictable means for unloading, and the motivation for implementation stems from the prior arts desire for efficiency and performance of the parallel tasks of immersion and curing wherein such an additional arm would predictably assist in reducing / avoiding instances of the above described undesired process stoppages, such as instances where a singular arm may be needed in two places at once (such as occupied with an immersion process while cured samples are needing unloading). Additionally the examiner maintains that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B. Further the particular use of the two arms for coordinating transfer into / out of a curing station reflects knowledge well known in the art to provide predictable movement of samples into and out of shared heat treatment stations and as one or ordinary skill in the art would readily appreciate that based on the commonly known theory of division of labor; that specialization of tasks within a production environment would lead to increased productivity.
In response to applicant's argument that Hohenstein’s arms are only designed to introduce and remove items from a carousel (pg 11), 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). The actual arm structure and / or carousel of Hohenstein have not been relied upon in the applied combination.
Applicant argues that Hohenstein teaches away from incorporation of the arms into a batch-style system. Hohenstein has described a batch operation as involving a batch of crucibles being placed into a furnace. The examiner notes that the process as taught by the combination of applied prior art dictates that each individual sample is separately and individually cured in a given curing workstation, thus they are not placed as a batch of samples into a common furnace and processed simultaneously. As such the oven / curing workstations of the applied prior art combination do not equate to the batch operation being referenced in Hohenstein. As such, any argued statements directed to furnace batch operation as teaching away are not relevant / moot with respect to structure of the prior art process.
Thus the Applicant’s arguments are not persuasive.
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/ Primary Examiner, Art Unit 1712
Prosecution Insights