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 .
Information Disclosure Statement
The information disclosure statement filed 06/25/2025 fails to comply with 37 CFR 1.97(c) because the timing statement as specified in 37 CFR 1.97(e) filed with the referenced IDS is incorrect.
The applicants stated that “no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.”
The referenced certification statement has been signed by the attorney of the record Robert Auerbach Reg. 46,525.
The referenced statement contradicts to the facts.
At least the Non-patent Literature Document 2 listed on the referenced IDS, “Bahl, Laavayene et al. “Cu Bi: Decluttering Robot”. May 2019. Retrieved from the Internet (Year: 2019)”, was filed as a part of the IDS on 09/03/2024 (which is more than three months prior to the filing of the information disclosure statement of 06/25/2025) in the application SN 18/819,084, US Patent No 12,310,545 (which is the application of the same inventor and the same applicant as the inventor and the applicant of the instant application) by the same attorney that filed the IDS filed in the instant application on 06/25/2025.
Moreover, the referenced document has been already filed in the IDS filed 02/24/2025 in the instant application by the same attorney Robert Auerbach Reg. 46,525.
Thus, in contrast to the statement made in the IDS filed 06/25/2025 at least the Non-patent Literature Document 2 listed on the referenced IDS, “Bahl, Laavayene et al. “Cu Bi: Decluttering Robot”. May 2019. Retrieved from the Internet (Year: 2019)” has been known to the individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement
The referenced IDS has been placed in the application file, but the information referred to therein has not been considered.
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 2-10 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.
Claims 2-10 are indefinite because the term “the tidying robotic system” in these claims lacks proper antecedent basis.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,310,545.
As to claims 1-10: although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent recite the limitations of the independent claim 1 and most of the dependent claims and because the scope of the claims of the patent is inside of the scope of the instant claims. As to claims 2 and 3 it appears that the limitations of these claims that are not recited by the claims of the patent, such as an intake port, rotating brushes, vacuum fan with a motor, filter exhaust, are features of the conventional robotic vacuum cleaners.
As to claim 11-20, the method steps recited by the referenced claims are obvious over the recitation of the logic provided by the claims of the patent. Further, the claims of the patent recite parts of the robot recited by the instant claims.
Response to Arguments
Applicant's arguments filed 09/16/2025 have been fully considered but they are not persuasive.
The applicants amended the claims and allege that the claims correspond to the requirements of 35 USC 112.
This is not persuasive for the claims 2-10.
While most of the deficiencies of the claims have been corrected, claims 2-10 are still indefinite because the term “the tidying robotic system” in these claims lacks proper antecedent basis.
The applicants further allege that the double patenting rejection over the US 12,310,545 has been obviated by filing a terminal disclaimer.
This is not persuasive because no terminal disclaimer has been filed.
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.
/ALEXANDER MARKOFF/Primary Examiner, Art Unit 1711