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 with traverse of Group II, corresponding to claim 32 in the reply filed on September 1st, 2026, is acknowledged. Claims 1-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. The traversal is on the ground(s) that:
Applicant argues that:
The Restriction Requirement acknowledges that the claims of Groups I and II share technical features relating to sensing, predicting that contaminants have been deposited on a surface, and steering a light beam toward the surface to sanitize the surface. The Requirement nevertheless concludes that those features do not constitute a special technical feature in view of the Zierdt publication.
Applicant respectfully submits that the Requirement characterizes the common subject matter at an unduly generalized level and does not consider the claimed inventions as a whole. In particular, independent method claim 30 and system claim 32 recite the same coordinated sanitization technique in method and system form. Claim 30 recites:
1. tracking, by one or more processors, a subject in a confined location;
2. using that tracking to predict that the subject has deposited one or more contaminants on a surface in the confined location; and
3. based at least in part on that prediction, causing a light beam to be steered toward the surface.
Correspondingly, claim 32 recites:
1. one or more sensors configured to track a subject in a confined location;
2. one or more processors configured to predict, based at least in part on sensor data from those sensors, that the subject has deposited one or more contaminants on a surface in the confined location; and
3. a light source that the processors cause to be steered toward the surface based at least in part on that prediction.
Thus, claim 32 recites the physical system specifically configured to perform the operative steps of claim 30. The claims are not linked merely by the general concepts of detecting sensor data and directing sanitizing light. Rather, they share the more specific technical relationship of tracking a subject in a confined location, using the tracking data to predict that the tracked subject deposited contaminants on a particular surface, and responsively steering a sanitizing light beam toward that surface. The specification likewise presents the method and system as corresponding implementations of the same targeted sanitization technology.
The Examiner would respectfully respond that:
Unity of invention must be present within all independent claims, not just some of the independent claims. As such, the Examiner has not characterized the subject matter at an unduly generalized level, because claim 1 does not recite what the Applicant has argued (i.e. tracking a subject in a confined location, using the tracking data to predict that the tracked subject deposited contaminants on a particular surface, and responsively steering a sanitizing light beam toward that surface). Because the reference of Zierdt discloses the limitations that create unity between the claimed inventions as set forth in independent claims 1, 30 & 32 of:
A sensor configured to detect sensor data of a surface (page 3, section 1.5; page 3, section 2.1);
A processor configured to predict that one or more contaminants are deposited on said surface based at least in part on said sensor data of said surface (page 3, section 2.1); and
A light source configured to steer a light beam towards said surface based at least in part on predicting that said one or more contaminants are deposited on said surface to thereby sanitize said surface of said one or more contaminants (page 3, section 2.1; page 5 to page 6, section 2.4).
Then a lack of unity exists because independent claims 1, 30 & 32 do not share a corresponding technical feature that makes a contribution over the prior art.
Therefore, this response is not persuasive.
Applicant also argues that:
Under 37 C.F.R. § 1.475(b)(4), claims in different statutory categories are considered to have unity of invention when they are directed to "[a] process and an apparatus or means specifically designed for carrying out the said process."
That is the relationship presented here. Claim 30 recites a process for targeted sanitization, and claim 32 recites an apparatus specifically configured to carry out that process. The sensors of claim 32 perform the claimed tracking function; the processors perform the claimed prediction based on the tracking data; and the light source is steered toward the identified surface based on that prediction. The system limitations are therefore functionally and technically tied to the method steps, rather than being directed to a general-purpose apparatus having only an incidental capability of performing the claimed method. Accordingly, claims 30-32 constitute the type of process-and-apparatus combination expressly contemplated by 37 C.F.R. § 1.475(b)(4).
The Examiner would respectfully respond that:
The Applicant is pointing to the rules and guidelines for claims when said claims are directed to multiple categories of inventions. 37 C.F.R. § 1.475(b)(4) is stating that, even though these claims are directed to multiple categories of inventions, then said claims will be considered (not definitively, but will be in consideration) to have unity of invention if said claims are directed to "[a] process and an apparatus or means specifically designed for carrying out the said process." Because the claims of the instant invention are directed to a process and an apparatus for carrying out the process, then said claims are in consideration to have unity of invention, and do not definitively lack unity mere because they are directed to multiple categories of inventions. This does not supersede the requirement that a technical relationship among those inventions involving one or more of the same or corresponding special technical features must be present in each of the claimed inventions, in which a special technical feature is only present when said feature makes a contribution over the prior art. Stated differently, not every single group of inventions claiming a process in an independent claim, and an apparatus for carrying out the process in another independent claim automatically have unity. Such claims must also have a technical relationship among those inventions involving one or more of the same or corresponding special technical features, and as noted above, the technical feature linking the differently claimed inventions do not make a contribution over the prior art.
As such, the lack of unity exists, and this response is not persuasive.
Applicant further argues that:
The Requirement identifies a common feature involving a sensor configured to detect sensor data of a surface, a processor configured to predict contaminant deposition based on the sensor data, and a light source configured to steer a beam toward the surface. It then concludes that this feature is disclosed by Zierdt and therefore is not a special technical feature.
Respectfully, this formulation does not address the complete technical relationship recited by claims 30 and 32. Among other things, claim 32 does not merely recite a sensor that detects data "of a surface." It recites one or more sensors configured to track a subject in a confined location, with the processor predicting from that tracking-related sensor data that the subject has deposited contaminants on the surface. Claim 30 recites the corresponding tracking and subject-specific prediction in method form.
The Requirement does not separately explain why this more specific combination of subject tracking, subject-specific prediction of contaminant deposition, and responsive beam steering fails to define a contribution shared by Groups I and II. Nor does the Requirement explain why claim 32 is not an apparatus specifically designed to carry out the process of claim 30 under 37 C.F.R. § 1.475(b)(4).
The Examiner would respectfully respond that:
Independent claim 1 is also grouped with Group I, and is a mere broader version of independent claim 30. The Applicant appears to only be focusing on the more limiting method claim 30, and the associated apparatus claim 32. However, the technical relationship must exist in independent claims 1, 30 & 32. Independent claim 1 makes no such mention of “one or more sensors configured to track a subject in a confined location, with the processor predicting from that tracking-related sensor data that the subject has deposited contaminants on the surface”. Thus, said limitation cannot be considered a corresponding technical feature, because said limitation is not found in each and every independent claim, and therefore does not interlink said claims as a shared technical feature. Further, as noted above, the reference of Zierdt does teach the corresponding technical feature. Thus, the lack of unity exists because the corresponding technical feature is not a special technical feature due to said feature not making a contribution over the prior art.
As such, this response is also not persuasive.
The Applicant finishes by arguing that:
Claims 30 and 32 are directed to the same targeted sanitization operation, use the same underlying sensor, processor, prediction, and beam-steering subject matter, and differ principally in whether that subject matter is expressed as method steps or as correspondingly configured system components. Examination of claim 32 will therefore necessarily involve consideration of substantially the same technical subject matter implicated by claim 30.
The substantial overlap between the claims further demonstrates that they are not directed to unrelated inventions lacking a common inventive concept. Instead, they represent corresponding method and apparatus expressions of the same disclosed technology.
The Examiner would respectfully respond that:
The Examiner would merely reiterate that this is a 371 application which follows the national stage application guidelines for requirement for unity of invention under 37 C.F.R. § 1.475. As noted above, a lack of unity exists because the groups of inventions lack a corresponding special technical feature. Further, the Examiner would note (in which the Applicant is aware) that the examination of process claims follow different examination procedures than apparatus claims; wherein an apparatus that may necessarily meet the limitations of the claimed apparatus may NOT necessarily meet the limitations of the claimed method. Thus, different searching strategies, areas of search, and cross-referencing databases of search would be needed if the restriction were not required.
The Examiner would also note that should the claimed and elected apparatus be found allowable, then the withdrawn process claims that include all the limitations of the allowable apparatus claim will be rejoined.
Nonetheless, this response is not persuasive, the requirement is still deemed proper and is thus made FINAL.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 32 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kaler et al. (U.S. Publication No. 2024/0207475).
Kaler discloses a system for sanitizing a surface in a confined location (Abstract), comprising:
(a) a light source (102) configured to provide a light beam having a wavelength or wavelength range sufficient to sanitize said surface (Abstract; paragraph 41);
(b) one or more sensors configured to track a subject in said confined location (paragraph 23); and
(c) one or more computer processors operatively coupled to said light source and said one or more sensors (paragraphs 49, 52-55 and 92-104), wherein said one or more computer processors are individually or collectively configured to:
(i) predict, based at least in part on sensor data from said one or more sensors, that said subject has deposited one or more contaminants on said surface in said confined location (paragraphs 55, 83-86, 92, 97, 102, 122, 123, 146, 169 and 255); and
(ii) based at least in part on predicting that said subject has deposited said one or more contaminants on said surface in said confined location, cause said light source to be steered to direct said light beam towards said surface (paragraphs 27, 39, 40, 48, 51, 55, 89, 93, 168 and 172).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN C JOYNER whose telephone number is (571)272-2709. The examiner can normally be reached Monday-Friday 8:00AM-4:30PM.
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/KEVIN JOYNER/ Primary Examiner, Art Unit 1799
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