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 Arguments
35 USC 102 and 103
Applicant's arguments filed 14 August 2026 have been fully considered but they are not persuasive. Regarding independent claim 1, Applicant argues that the primary reference Rose does not teach the claimed shielding layer (Remarks pp. 6-7). Examiner respectfully disagrees. First, Applicant in Remarks p. 6 erroneously applies the case law of Innova/Pure Water, Inc. V. Safari Water Filtration Systems, Inc., Cf. CAE Screen Plates, Inc. V. Heinrich Fiedler GMBII & Co. KG, Ethicon Endo-Surgery, Inc. V. U.S. Surgical Corp. As detailed in the Office Action dated 1 June 2026, the cited teachings of Rose was layers 811, 812, 813, 821, 822, 823, 831, 832, 833. Thus, Rose teachings multiple layers, and only one of the layers is the shielding layer. Because the layers are different, they teach different terms of claim 1, and thus do not go against the case law. Therefore, Applicant’s primary argument against rose is that Rose does not teach a dedicated "shielding layer which is constituted by a conductor" for electrostatically shielding the sensor from external noise (Remarks p. 7). However, this feature was not claimed. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., electrostatically shielding the sensor from external noise) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regarding claim 4, Applicant’s arguments suffer from a similar deficiency in that they rely on features that are not claimed (i.e., “a cover structure having the conductive shielding layer physically connected to a grounding conductive wire in order to discharge electrostatic noise to the ground”). Thus, they are not persuasive for similar reasons as to claim 1.
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 10 and 12 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 10 uses “or,” which makes it confusing as to what is the subject of the second clause following the “or.” Regarding the second clause, it is unclear if Applicant means “a wiring that has been printed […] on a surface of the covering part by a coating material containing conductor particles of silver nanoparticles,” “the shielding layer is configured […] on a surface of the covering part by a coating material containing conductor particles of silver nanoparticles,” or a different grammatical interpretation. Applicant can overcome this rejection by separating the two clauses into separate claims because claim 10 claims in the alternative.
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.
Claim(s) 1-2, 4-6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20130238129 A1 to Rose.
Re Claim 1, Rose teaches:
A cover to be attached to a gripping part of a robot hand (at least Figs. 7-8B and [0094] “gripping systems” and “insulating wall and/or skin may comprise silicon rubber or the like”), comprising:
a covering part which is constituted by an insulator and which covers the gripping part of the robot hand (at least Figs. 7-8B and [0094] “gripping systems” and “insulating wall and/or skin may comprise silicon rubber or the like”); and
a shielding layer which is constituted by a conductor and which is provided inside the covering part or on a surface of the covering part (at least Figs. 7-8B and 16A-B and [0096] “the electrodes touching. Next, the pistons in the sensor cells in each layer 811, 812, 813, 821, 822, 823, 831, 832, 833 may be extended 904 until the contact surfaces 815, 825, 835 of the sensor arrays 810, 820, 830 are touching each other”),
wherein (1) the gripping part is provided with a sensor, and the shielding layer is provided so as to cover the sensor or (2) the covering part is provided with a sensor, and the sensor is covered with the shielding layer (at least Figs. 7-8B and 16A-B and [0094-96] teaches limitation (2) because the covering part wraps around the sensors, which is teaching “the covering part is provided with a sensor”. Further, the aforementioned figures teaching “the sensor is covered with the shielding layer” because there are many layers of sensors such as [0096] “the sensor cells in each layer 811, 812, 813, 821, 822, 823, 831, 832, 833” so due to the transitional phrase “comprising,” a more inner layers such as 812 is covered by a more outer layer 813 and thus teaching the claimed limitation).
Re Claim 2, Rose teaches:
The cover according to claim 1, wherein the covering part is a resin molded product (at least [0166] “an outer layer comprising a polycarbonate resin thermoplastic”) that has a hollow whose shape corresponds to an outer shape of the gripping part and of the sensor (at least Figs. 16A-B, the outer layer of 1611n and 1612b).
Re Claim 4, Rose teaches:
The cover according to claim 1, further comprising a grounding conductive wire which is connected to the shielding layer and is connected to a ground (at least [0138[ “resistively tied to ground”).
Re Claim 5, Rose teaches:
A robot hand comprising the cover according to claim 1 (at least Fig. 34 and [0151] “incorporated into the hands (not shown) of a robot”).
Re Claim 6, Rose teaches:
A robot hand comprising the cover according to claim 2 (at least Fig. 34 and [0151] “incorporated into the hands (not shown) of a robot”).
Re Claim 8, Rose teaches:
A robot hand comprising the cover according to claim 4 (at least Fig. 34 and [0151] “incorporated into the hands (not shown) of a robot”).
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.
Claim(s) 3, 7, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rose in view of US 20160192980 A1 to Newton.
Re Claim 3, Rose teaches:
The cover according to claim 1 (detailed with respect to claim 1).
Rose does not explicitly teach:
wherein the shielding layer is configured by a wire of the conductor being disposed in a mesh-like manner.
However, Newton teaches:
wherein the shielding layer is configured by a wire of the conductor being disposed in a mesh-like manner (at least [0053] “a shield 425 that comprises a conductive cloth, wire mesh, or wire braid 430 utilized to form the conductive medium”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the cover taught by Rose with the wire mesh taught by Newton with a reasonable expectation of success and predictable results. A person having ordinary skill would have been motivated to do so “to form the conductive medium […] While these particular flexible embodiments might not prevent a fault damage because of the potentially thin layer of material that is used, it can still utilize the AEM system to stop the power output from the generator” (Newton [0053]).
Re Claim 7, the combination of Rose and Newton teaches:
comprising the cover according to claim 3 (detailed with respect to claim 3).
Rose further teaches:
A robot hand (at least Fig. 34 and [0151] “incorporated into the hands (not shown) of a robot”).
Re Claim 9, Rose teaches:
The cover according to claim 1 (detailed with respect to claim 1).
Rose does not explicitly teach:
wherein the covering part has a double- structure comprising an inner structure and an outer structure, and the shielding layer is disposed between the inner structure and the outer structure.
However, Newton teaches:
wherein the covering part has a double- structure (at least Fig. 4C) comprising an inner structure (at least Fig. 4C element446 and [0054] “foamed material 446 with a very low dielectric constant”) and an outer structure (at least Fig. 4C element 449 and [0054] “outer insulation layer 449”.), and the shielding layer is disposed between the inner structure and the outer structure (at least Fig. 4C element 448 and [0054] “a shield 448”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the cover taught by Rose with the structure taught by Newton with a reasonable expectation of success and predictable results. A person having ordinary skill would have been motivated to do so because “While the foamed material will withstand the voltage in most places, if the foamed material is used alone there will be insulation failures at modest voltages at particular points (because the randomly arranged bubbles in the foam line up between the conductors). The conventional material protects against failures at those points. Tests have shown good capacitance results with low heating, thus in most areas the foamed material is withstanding most of the voltage” (Newton [0054]).
Re Claim 11, the combination of Rose and Newton teaches:
comprising the cover according to claim 9 (detailed with respect to claim 9).
Rose further teaches:
A robot hand (at least Fig. 34 and [0151] “incorporated into the hands (not shown) of a robot”).
Allowable Subject Matter
Claims 10 and 12 contain allowable subject matter. Regarding claim 10, neither Rose nor Newton teaches the claimed “wherein the shielding layer is configured by a wiring that has been printed inside the covering part or on a surface of the covering part by a coating material containing conductor particles of silver nanoparticles”. This is because while both Rose and Newton teaches shielding layers, they are both silent on the method of making them by printing inside the covering part. They are also silent on the use of silver nanoparticles, so the second clause of claim 10 contains allowable subject matter regardless of what grammatical interpretation detailed in the 112(b) rejection above is used. Claim 12 contains allowable subject matter for similar reasons due to its dependency.
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 GEORGE SUN whose telephone number is (571)270-7221. The examiner can normally be reached M-F 7:00am-4:00pm.
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, Justin Mikowski can be reached at (571) 272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE SUN/Primary Examiner, Art Unit 3673
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