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 .
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.
Claim 9 is 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.
As per claim 9, the term “preferentially” renders the claim indefinite because it is unclear whether the limitations that follow are required or not. For the purposes of examination, the term will be ignored and the limitations that follow are interpreted to be required.
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 1-4, 6, 10, and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7, 3-14, and 16 of U.S. Patent No. 11,975,453. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader in.
Instant claim
Corresponding patent claim
1, 4, 16
6
2-3, 17, 19
7
6, 18
14
10
16
As per claims 2-3, 17, and 19, claim 7 of the patent is silent regarding associating the group of pixels with the marker. However it is implied as detecting the set of pixels defining the marker color and geometry is part of the step of detecting the marker.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,975,453 in view of Chankaramangalam (US 2021/0260720).
As per claim 5, claim 8 of the patent teaches all of the limitations except for the scan data being a set of depth maps.
However, Chankaramangalam teaches scanning the surface of a part to obtain a 3D surface model to be sanded (see at least para. 21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of patent ‘453 with the features taught by Chankaramangalam because using 3D data allows the robotic system to determine imperfections on a surface using depth data that may not be apparent in 2D data.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,975,453 in view of Maloney (US 2012/0220194)
As per claim 7, claim 14 of the patent teaches all of the limitations except for maintaining an axis of rotation of the sand head normal to the workpiece.
However, Maloney teaches orienting the finishing tool to be normal to the surface of the part being finished (see at least para. 38 and 54).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of patent ‘453 with the features of Maloney because orienting the finishing tool to be normal to the surface of the part being finished provides for maximum surface contact area over a flat surface.
Allowable Subject Matter
Claims 11-15 are allowed.
Claims 8-9 and 20 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. Additionally claim 9 would be needed to be rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT NGUYEN whose telephone number is (571)272-4838. The examiner can normally be reached M-F 8AM - 4PM ET.
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, ANNA MOMPER can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T NGUYEN/PRIMARY EXAMINER, Art Unit 3619
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