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 .
Specification
The abstract of the disclosure is objected to because:
Line 3, replace “comprises” with “includes”
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
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.
Claims 5, 6, 17 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites “a controller means manually operated by a person…” However, it is indefinite and unclear as to how the “controller means” as recited in claim 5 relates to the previously recited “remote electronic device by a user” as previously recited in claim 1? I.e.., are the “controller means” and the “remote electronic device” referring to the same claim elements or different elements? Clarification is required.
Claim 6 recites “a handheld communication device…” However, it is indefinite and unclear as to how the “a handheld communication device” as recited in claim 6 relates to the previously recited “remote electronic device by a user” as previously recited in claim 1? I.e.., are the “a handheld communication device” and the “remote electronic device” referring to the same claim elements or different elements? Clarification is required.
Claim 17 recites “a controller means manually operated by a person…” However, it is indefinite and unclear as to how the “controller means” as recited in claim 17 relates to the previously recited “remote electronic device by a user” as previously recited in claim 12? I.e.., are the “controller means” and the “remote electronic device” referring to the same claim elements or different elements? Clarification is required.
Claim 18 recites “a handheld communication device…” However, it is indefinite and unclear as to how the “a handheld communication device” as recited in claim 18 relates to the previously recited “remote electronic device by a user” as previously recited in claim 12? I.e.., are the “a handheld communication device” and the “remote electronic device” referring to the same claim elements or different elements? Clarification is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 10 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2019/0375604 (Kuo).
Regarding Claims 1, 10 and 11, Kuo teaches: Claim 1 - an object mounting method, comprising: receiving a control signal at a transceiver of a vacuum control device (40 – receives signal from an external electronic device D as described in at least paragraph [0056]), wherein the control signal is communicated from a remote electronic device in response to an actuation of the remote electronic device by a user (the external electronic device D is operated by a user as described in at least paragraph [0056]); generating a vacuum cup actuation signal in response to receiving the control signal at the transceiver of the vacuum control device (as described in paragraph [0056], the user sets high and low determined pressures for a vacuum module (100)); and receiving power at a vacuum pump (50) of a vacuum mounting module (100) in response to generating the vacuum cup actuation signal, wherein the vacuum pump (50) creates a vacuum in a vacuum cup (20/30) of the vacuum mounting module (100) in response to receiving the power, and wherein the vacuum in the vacuum cup (20/30) defines at least a predefined vacuum pressure between a surface of an object of interest (Q) and the vacuum cup (20/30) so that the object of interest (Q) becomes releasably secured to the vacuum mounting module (100), (Figures 1-15); Claim 10 receiving power at the vacuum pump (50) from a power source (60) in the vacuum mounting module (100), (Figures 1-15); Claim 11 – wherein the vacuum control device (40) is a component of the vacuum mounting module (100), (Figures 1-15).
Claim(s) 1, 2, 4, 10 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2020/0247539 (Shoemaker, JR.).
Regarding Claims 1, 2, 4, 10 and 11, Shoemaker, JR. teaches: Claim 1 - an object mounting method, comprising: receiving a control signal at a transceiver of a vacuum control device (8 – drone receives signal from an remote control device (6) as described in at least paragraph [0008]), wherein the control signal is communicated from a remote electronic device (6) in response to an actuation of the remote electronic device by a user (the remote controller (6) is operated by a user as described in at least paragraph [0004]); generating a vacuum cup actuation signal in response to receiving the control signal at the transceiver of the vacuum control device (remote control device (6) can be used to control relay switches (35) and (45) which are used to power on and off a vacuum pump (15)); and receiving power at a vacuum pump (15) of a vacuum mounting module in response to generating the vacuum cup actuation signal, wherein the vacuum pump (15) creates a vacuum in a vacuum cup (25) of the vacuum mounting module in response to receiving the power, and wherein the vacuum in the vacuum cup (25) defines at least a predefined vacuum pressure between a surface of an object of interest (30) and the vacuum cup (25) so that the object of interest (30) becomes releasably secured to the vacuum mounting module, (Figure 1); Claim 2 – wherein the vacuum mounting module and the vacuum control device are secured to an aerial drone (seen in Figure 1), (Figure 1); Claim 4 - wherein the control signal communicated from the remote electronic device (6) is a first control signal, and further comprising: receiving a second control signal at the transceiver (8) of the vacuum control device, wherein the second control signal is communicated from the remote electronic device (6); and generating a vacuum cup release signal in response to receiving the second control signal, wherein the vacuum pump (15) is actuated to release the vacuum in the vacuum cup (25) in response to generating the vacuum cup release signal (as described in at least paragraph [0010], the relay switch (45) to deactivate the pump (15)), and wherein the object of interest (30) is released after the vacuum in the vacuum cup (25) is released, (Figure 1); Claim 10 receiving power at the vacuum pump (15) from a power source (at least paragraph [0009] noting the power source of the pump (15) could be part of the drone (5) or an independent power source just for the pump (15)) in the vacuum mounting module, (Figure 1); Claim 11 – wherein the vacuum control device is a component of the vacuum mounting module, (Figures 1-15).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
As best understood in view of the 112 rejections above claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2020/0247539 (Shoemaker, JR.) in view of U.S. Patent Application Publication No. 2019/0375604 (Kuo).
Regarding Claims 5 and 6, Shoemaker, JR. teaches the method as described above, in addition to Shoemaker, JR. teaching: Claim 5 – wherein the control signal communicated from the remote electronic device (6) is a first control signal, the method further comprising: receiving a second control signal at the transceiver (8) of the vacuum control device; and generating a vacuum cup release signal in response to receiving the second control, wherein the vacuum pump (15) is actuated to release the vacuum in the vacuum cup (25) in response to generating the vacuum cup release signal (as described in at least paragraph [0010], the relay switch (45) to deactivate the pump (15)), and wherein the object of interest (30) is released after the vacuum in the vacuum cup (25) is released, (Figure 1); Claim 6 – wherein the control signal communicated from the remote electronic device (6) is a first control signal, the method further comprising: receiving a second control signal at the transceiver of the vacuum control device; and generating a vacuum cup release signal in response to receiving the second control signal, wherein the vacuum pump is actuated to release the vacuum in the vacuum cup in response to generating the vacuum cup release signal (as described in at least paragraph [0010], the relay switch (45) to deactivate the pump (15)), and wherein the object of interest (30) is released after the vacuum in the vacuum cup (25) is released, (Figure 1).
Shoemaker, JR. does not teach: wherein the second control signal is communicated from a controller means manually operated by a person (Claim 5); and wherein the second control signal is communicated from a hand held communication device (Claim 6). However, Kuo teaches: Claims 5 and 6 – wherein a remote controller for a suction cup (100) could be anyone of a computer, smartphone or a laptop (described in paragraph [0056]), (Figures 1-15). Therefore, it would have been obvious to one of ordinary skill in the art to modify the method of Shoemaker, JR. to have wherein the second control signal is communicated from a controller means manually operated by a person (Claim 5); and wherein the second control signal is communicated from a hand held communication device (Claim 6) as taught by Kuo for the purposes of having the ability for the suction cup to be controlled by a plurality of different remote controllers.
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 1-6, 10, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,509,226 (Buttermore) in view of U.S. Patent Application Publication No. 2020/0247539 (Shoemaker, JR.) and/or U.S. Patent Application Publication No. 2019/0375604 (Kuo). Claims 1-16 of Buttermore teach all of the structure of the methods recited in claims 1-6, 10 and 11 of the current application, and as such are inherently capable of performing the “method” seps of claims 1-6, 10 and 11 of the current application. However, Buttermore does not specifically teach: the first signal being generated by a remote electronic device/controller means/handheld communication device, etc. However, Shoemaker, JR. teaches: wherein a remote control device (6) is used to operate a pump (15) of a suction cup (25), (Figure 1); and Kuo teaches: wherein a remote controller for a suction cup (100) could be anyone of a computer, smartphone or a laptop (described in paragraph [0056]), (Figures 1-15). Therefore, it would have been obvious to one of ordinary skill in the art that the method of Buttermore could be modified to include the first signal being generated by a remote electronic device/controller means/handheld communication device, etc. as taught by Shoemake, JR. and/or Kuo for the purposes of being able to remotely control the suction cups using standard electronics.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,845,553 (Buttermore) in view of U.S. Patent Application Publication No. 2020/0247539 (Shoemaker, JR.) and/or U.S. Patent Application Publication No. 2019/0375604 (Kuo). Claims 1-13 of Buttermore teach all of the structure of the methods recited in claims 1-18 of the current application, and as such are inherently capable of performing the “method” seps of claims 1-18 of the current application. However, Buttermore does not specifically teach: the first signal being generated by a remote electronic device/controller means/handheld communication device, etc. However, Shoemaker, JR. teaches: wherein a remote control device (6) is used to operate a pump (15) of a suction cup (25), (Figure 1); and Kuo teaches: wherein a remote controller for a suction cup (100) could be anyone of a computer, smartphone or a laptop (described in paragraph [0056]), (Figures 1-15). Therefore, it would have been obvious to one of ordinary skill in the art that the method of Buttermore could be modified to include the first signal being generated by a remote electronic device/controller means/handheld communication device, etc. as taught by Shoemake, JR. and/or Kuo for the purposes of being able to remotely control the suction cups using standard electronics.
Claims 1, 3-6, 10 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,559,906 (Buttermore) in view of U.S. Patent Application Publication No. 2020/0247539 (Shoemaker, JR.) and/or U.S. Patent Application Publication No. 2019/0375604 (Kuo). Claims 1-13 of Buttermore teach all of the structure of the methods recited in claims 1, 3-6, 10 and 11 of the current application, and as such are inherently capable of performing the “method” seps of claims 1, 3-6, 10 and 11 of the current application. However, Buttermore does not specifically teach: the first signal being generated by a remote electronic device/controller means/handheld communication device, etc. However, Shoemaker, JR. teaches: wherein a remote control device (6) is used to operate a pump (15) of a suction cup (25), (Figure 1); and Kuo teaches: wherein a remote controller for a suction cup (100) could be anyone of a computer, smartphone or a laptop (described in paragraph [0056]), (Figures 1-15). Therefore, it would have been obvious to one of ordinary skill in the art that the method of Buttermore could be modified to include the first signal being generated by a remote electronic device/controller means/handheld communication device, etc. as taught by Shoemake, JR. and/or Kuo for the purposes of being able to remotely control the suction cups using standard electronics.
Allowable Subject Matter
Claims 3, and 7-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. In addition to overcoming the Double Patenting Rejections as noted above.
Claims 12-18 would be allowable barring the Double Patenting and 112 rejections as noted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/JOSHUA E RODDEN/Primary Examiner, Art Unit 3642
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