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 .
Response to Amendment
The Amendment filed on April 1, 2026 has been received and entered. Claims 1–20 are currently pending; claims 1, 8, 9, 11, 18, and 19 have been amended; claims 2–7, 10, 12–17, and 20 remain in their original form.
Response to Arguments
Applicant's arguments filed 04/01/2026 have been fully considered and are persuasive with respect to the abstract objection, the claim objections directed to claims 8, 9, 18, and 19, and the rejection under 35 U.S.C. § 112(b) directed to claim 18. Applicant amended the abstract to provide a concise narrative summary of the technical disclosure. Applicant further corrected the terms in claims 8, 9, and 19, and restructured claim 18. These corrections are accepted. Accordingly, the abstract objection, the claim objections directed to claims 8, 9, 18, and 19, and the rejection of claim 18 under 35 U.S.C. § 112(b) are hereby withdrawn.
Applicant’s arguments filed 04/01/2026 have been fully considered but are not persuasive with respect to the rejection under 35 U.S.C. §112(a). Applicant’s arguments, see pages 8–10 of the Remarks, state that amended independent claims 1 and 11 are supported by newly added paragraphs, which describe the specific algorithms and processes underlying the claimed functions, and that this constitutes inherent functionality without adding new matter. The Examiner respectfully disagrees.
The amendments add highly specific downstream algorithmic limitations to the claims, including correlating a continuity reading exceeding a threshold with a visual anomaly, generating a verification assessment comprising a confidence score or validity indicator, and generating UAV waypoints or adjusting test parameters. However, these amendments do not cure the written-description deficiency; rather, they introduce new matter under 35 U.S.C. § 132(a). The originally filed specification broadly disclosed "determining an analysis" and "producing a verification assessment" but provided no algorithms, logic flows, or metrics showing how the processor or AI model performs these tasks. A person of ordinary skill in the art reading the original specification would NOT know: (i) that defect analysis relies on correlating threshold electrical readings with visual anomalies; (ii) that the AI model produces a statistical confidence score; or (iii) that the system creates an active feedback loop to generate new drone waypoints based on the analysis. Applicant's argument that these algorithms are "inherent" to the system is not persuasive. The mere original disclosure of generic components (a UAV, an electric brush, a computer processor, and an AI model) does not inherently disclose the highly specific threshold correlations, statistical confidence scoring, or drone waypoint navigation techniques now claimed. Therefore, the rejection under 35 U.S.C. §112(a) is maintained [in view of the originally filed disclosure and not the currently amended disclosure which has introduced a large extent of new matter issues] and updated to also reflect the new matter issues.
Applicant’s arguments filed April 1, 2026, see pages 11–14 of the Remarks, have been fully considered pursuant to MPEP § 608.04(a). Therefore no 35 U.S.C. 103 rejection is provided due to the large extent of new matter issues that have arisen from the Applicant’s current amendment.
Based on these facts, this action is made FINAL.
Specification
The amendment filed on April 1, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The newly added paragraphs which introduce specific technical details and algorithms that were not present in the application as originally filed, including: "-- correlates a continuity reading ... exceeding a predetermined threshold … with a specific visual anomaly--" [0054]; "--generates a confidence score (e.g., 0-100%) derived from internal classification probabilities--" [0056]; " generating … flight path waypoints to perform a high-resolution raster scan" [0057]; and "adjusting a parameter … increasing the test voltage" [0057].
Applicant is required to cancel the new matter from the specification. See MPEP § 608.04(a).
Claim Rejections - 35 USC § 112(a)
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 1-20 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 claims contain 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.
The amended independent claims 1 and 11 contain subject matter which was not described in the specification as originally filed. Specifically, the claims now recite: "...correlating a continuity reading... exceeding a threshold with a visual anomaly...", "...a verification assessment... comprising a confidence score or a validity indicator..." and "...enhanced testing technique comprises at least one of: generating a plurality of UAV waypoints, adjusting a test parameter... or outputting an instruction...".
As noted in the Specification Objection above, these specific algorithmic steps and metrics were absent from the originally filed disclosure. Consequently, the original specification also fails to teach one of ordinary skill in the art how to make and use these specific claimed computer-implemented algorithms, rendering the claims unenabled.
Accordingly, independent claims 1 and 11 lack written description support. Dependent claims 2–10 and 12–20 depend from claims 1 and 11 and do not cure the deficiency. Therefore, claims 1–20 are all rejected under 35 U.S.C. §112(a).
Claims 1–20 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 enablement requirement [in view of the originally filed disclosure and not the currently amended disclosure which has introduced a large extent of new matter issues]. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent claims 1 and 11 recite computer-implemented functions including, among other limitations: (i) determining, by a computer processor and based on the plurality of continuity readings and the visual image, an analysis of the desired location identifying a coating defect and a defect type; and (ii) inputting the analysis into an artificial intelligence model; and (iii) producing, by the computer processor, a verification assessment of the plurality of continuity readings and an enhanced testing technique based on the analysis.
Applicant(s) is/are respectfully reminded that, for computer-implemented functional claims, “examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter.” MPEP §2161.01(I).
As an initial matter, the Examiner notes that claims 1 and 11 appear to be originally-filed claims. originally-filed claims 1 and 11 do not disclose how the recited computer performs the functions “determining…”, “… an artificial intelligence model“ and “producing …, a verification assessment … and an enhanced testing technique based on the analysis” and thus do not provide the necessary written description support for pending claims 1–20. Accord Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (original claim language does not necessarily satisfy written description). That is to say, originally-filed claim 1 and 11 itself (themselves) does (do) not provide an algorithm that performs the functions in sufficient detail such that one of ordinary skill in the art can reasonably make and/or use the invention.
Furthermore, the specification does not describe an algorithm that performs the foregoing claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at filing.
The specification states, in a results-oriented manner, that the pilot testing pit “determines an analysis … based on the continuity readings and the visual images,” and that “the analysis identifies coating defects and defect types,” [0004] and further that the pilot testing pit “uses an artificial intelligence to produce a verification assessment and enhanced testing techniques,” [0004] where the “verification assessment may include verifying the accuracy of the continuity readings.” [0037]. The flowchart discussion likewise recites the functional results that an analysis identifying coating defect and defect type is determined, the analysis is input to an AI model, and then a verification assessment and an enhanced testing technique are produced “based on the analysis,” without providing concrete algorithmic steps for achieving those results. The specification additionally states that the “enhanced testing technique may be determined by inputting equipment structure data such as speed, contact, distance elevation, and orientation into a machine-learning model.” [0052]. These are functional descriptions of results at a high level (functional descriptions of results define what a system, product, or process is expected to do, outlining its intended behavior, features, and capabilities without specifying the exact method for achieving them). The specification fails to disclose, in algorithmic terms, how the computer: (i) determines the claimed “analysis” from the plurality of continuity readings and the visual image so as to identify a coating defect and a defect type across the breadth of the claims (e.g., feature extraction from images/readings, data fusion logic, defect/type taxonomy, decision rules/thresholds, output structure); (ii) generates the claimed “verification assessment” (e.g., what metric(s) define “accuracy,” what reference is used, what thresholds or confidence criteria apply, and what specific assessment output is produced); (iii) generates the claimed “enhanced testing technique based on the analysis,” particularly where the disclosure describes determining the enhanced testing technique by inputting equipment structure data into a model, rather than producing the technique from the claimed “analysis” identifying coating defect and defect type; and the specification does not define what the “enhanced testing technique” comprises (e.g., specific controllable test parameters, selection or optimization criteria, or output format) across the scope of the claims. To avoid this, applicants should either clearly define the specific structure or steps that perform the function or provide sufficient details in the specification to guide a skilled person. Applicant is also reminded: “if the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) … for lack of written description must be made.” MPEP §2161.01(I).
Therefore, because an algorithm for the functions (i) determining an analysis identifying a coating defect and a defect type from continuity readings and visual images, (ii) producing a verification assessment, and (iii) producing an enhanced testing technique based on the analysis, is not disclosed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented and possessed the claimed subject matter, and in accordance with MPEP §2161.01(I), claims 1–20 are rejected for lack of written description.
Dependent claims 2–10 and 12–20 fail to cure this deficiency of their respective independent claim and are rejected accordingly.
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 KEN KUDO whose telephone number is (571)272-4498. The examiner can normally be reached M-F 8am - 5pm.
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KEN KUDO
Examiner
Art Unit 2671
/KEN KUDO/Examiner, Art Unit 2671
/VINCENT RUDOLPH/Supervisory Patent Examiner, Art Unit 2671
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