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 .
Election/Restrictions
Applicant’s election without traverse of the Group I product invention, claims 1-5, in the reply filed on 4/15/2026 is acknowledged.
Applicant's election with traverse of Species I, Fig.1, in the reply filed on 4/15/2026 is acknowledged. The traversal is on the grounds that figures 2, 3a, 3b, 4 and 9a show the same embodiment as elected figure 1 and should thus be included therein. This is not persuasive. The argued figures have mutually exclusive features defining distinct species. For instance, element 120 in fig.1 differs structurally from elements 24/203/204/205 in fig.2. Also, element 116 of fig.1 differs from element 130 in figs.3a/3b, and differs from element 116’ in fig.4, and differs from element 112 in fig.9a. Applicant has failed to expressly state that the species/figures are “obvious variants” of one another.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 4/15/2026.
The examiner notes that withdrawn claims 6-19 depend from claim 1 and thus would be in condition for rejoinder after overcoming the double patenting issues noted elsewhere below (i.e., by filing appropriate terminal disclaimers). The examiner suggests amending claim 20 to similarly depend from claim 1 so as to facilitate similar rejoinder.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-10 of U.S. Patent No. US11986888 in view of the common skill/knowledge/sense in the art (i.e., one skilled and knowledgeable enough to design, manufacture and use robotic drilling apparatus).
Claim 1. A robotic drilling apparatus which has been adapted for drilling holes in ceilings and walls on a construction site, the apparatus comprising: a robotic arm (claim 1 of 888’) mounted to a substructure (claim 1 of 888’); an internet connection or communication port (claim 7 of 888’) for accessing and/or retrieving a BIM file, wherein the robotic arm has a movable end (claim 1 of 888’), the movable end being capable of movement in a three-dimensional space, wherein the robotic drilling apparatus further comprises a mount (claim 1 of 888’) provided on the movable end for holding a drilling device and a control unit (claim 1 of 888’) for controlling the operation of the robotic arm; wherein the robotic arm includes a plurality of segments (claim 1 of 888’) configured to pivot and/or rotate with respect to each other to enable the drilling device to be maneuvered about six axes; and wherein the control unit is configured (claim 8 of 888’) to analyze a BIM file and determine a schedule of works for the robotic drilling apparatus, determining an order for drilling the holes prescribed in the BIM file.
Claim 2. An apparatus as claimed in claim 1, wherein the control unit is configured (claim 9 of 888’) to determine an order for a pattern of holes based on hole size.
Claim 3. An apparatus as claimed in claim 1, wherein the control unit is configured (claim 10 of 888’) to determine an order for a pattern of holes based on location and taking into account reach of the robotic arm.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. US11945036 in view of the common skill/knowledge/sense in the art (i.e., one skilled and knowledgeable enough to design, manufacture and use robots and drilling apparatus).
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-5 of US11945036 set forth the limitations of current claims 1-5, respectively, in addition to other limitations and nomenclature.
Allowability
The reasons for allowability over the prior art for the current application are substantially similar and clear from the record of prosecution of parent application 17410037 (now US Patent 11945036) such that no further discussion is needed nor proper in accordance with the Stephen G. Kunin Memorandum dated 8/8/2003, which cites 37 CFR 1.104(e) and MPEP 1302.14.
Conclusion
The prior art made of record on the attached PTO-892 and not relied upon above is considered pertinent to applicant's disclosure due general structural similarity thereto.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
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