DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 6, 2026 has been entered.
The Applicant’s amendment filed on April 6, 2026 was received. Claim 17 was canceled. Claims 1 and 13 were amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action issued May 22, 2025.
Claim Interpretation
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
motion sensor device in claim 1;
marking composition container identification module in claims 7-10 and 18-22;
remote GPS applicator device in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 22 is objected to because of the following informalities: Claim 22 is dependent on canceled claim 17. For purposes of compact prosecution, claim 22 is interpreted as canceled due to the same limitations are found in claims 18-21.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The claim rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph on claim 17 is withdrawn because the claim has been canceled.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as being unpatentable over Nielsen and Nielsen-700 on claims 1-4 and 13-17 are withdrawn because the claims have been amended or canceled.
The claim rejections under 35 U.S.C. 103 as being unpatentable over Nielsen, Nielsen-700 and Nielsen-175 on claims 7-10 and 18-22 are withdrawn because the claims have been amended or canceled.
Claim 1-4 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nielsen (US 2012/0069178) in view of Nielsen-700 (US 2010/0090700).
In regards to claim 1, Nielsen teaches a marking device (100) comprising:
a marking stick body section having mounted to the marking stick body section:
a central laterally extending stick section (see span between handle and marking material-122) (fig. 3, fig. 5a);
a marking composition container (see marking dispenser-126) mounting section mounted to the central laterally extending stick section (fig. 3, fig. 5a);
a first end section opposite a second end section on the central laterally extending stick section (fig. 3, fig. 5a):
the first end section having a marking composition ejection section (see fig. 5a where marking dispenser is located) (fig. 3, fig. 5a);
and the second end section having a handle section adjacent a marking composition activation trigger (see actuation system-138 not labeled in fig. 5a, but trigger is shown where handle is located) (fig. 3, fig. 5a; para. 237, 258);
a data processor (see processing unit-130 which has a processor) in communication with the marking composition activation trigger (fig. 3, 5a; para. 28, 41-42, 52, 237, 255, 259, 283);
a motion sensor (see camera system-112 or inertial measurement unit (IMU)-170) device in communication the data processor (fig. 5a, 5b, 6; para. 198, 218-221, 230-233, 236-237, 250, 261, 263, 267, 278, 283-284, 297); and
a data transfer interface (see interface-1195 and communications interface-134) communicable to provide motion sensor information to a separate device (see onsite computer-1612 or central server-1614 (fig. 5b, 6, 14; para. 237, 242, 256, 258, 333-335).
Nielsen does not explicitly teach a separate smart computing device including a remote navigational module, whereby the intelligent marking stick applicator does not comprise the or another navigation module.
However, Nielsen-700 teaches a locate receiver (1610, separate smart computing device) comprising a location tracking system (1642). Nielsen-700 teaches the locate receiver wirelessly communicates with a marking device-110 and to a remote computer-1650 (separate smart computing device).
Nielsen-700 teaches information such as location is provided between the locate receiver (1610) and the marking device (110) and also with the remote computer-1650 (fig. 14-16; para. 245-246, 254, 258, 276-278).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the locate receiver and remote computer of Nielsen-700 onto the marking device of Nielsen, because Nielsen-700 teaches it will provide correlation of data (para. 363).
With regards to the claimed the intelligent marking stick applicator does not comprise the or another navigation module, Nielsen teaches alternatives to GPS-based techniques for tracking motion of the marking device (para. 230), such as the inertial measurement unit (IMU)-170, which provides acceleration, orientation, and gravitational forces by use of one or more inertial sensors, such as one or more accelerometers, gyroscopes, and compasses (para. 268).
In regards to claim 2, Nielsen and Nielsen-700 as discussed, where Nielsen teaches the data transfer interface (see communications interface-134) is capable of being a Bluetooth communication interface (para. 256).
In regards to claims 3-4, Nielsen and Nielsen-700 as discussed, where Nielsen-700 teaches the location tracking system-130 (navigational module) that is part of an onsite/remote computer-150 (separate smart computing device device) (see para. 114).
In regards to claim 13, Nielsen teaches a marking device (100) comprising:
a marking stick body section having mounted to the marking stick body section:
a central laterally extending stick section (see span between handle and marking material-122) (fig. 3, fig. 5a);
a marking composition container (see marking dispenser-126) mounting section mounted to the central laterally extending stick section (fig. 3, fig. 5a);
a first end section opposite a second end section on the central laterally extending stick section (fig. 3, fig. 5a):
the first end section having a marking composition ejection section (see fig. 5a where marking dispenser is located) (fig. 3, fig. 5a);
and the second end section having a handle section adjacent a marking composition activation trigger (see actuation system-138 not labeled in fig. 5a, but trigger is shown where handle is located) (fig. 3, fig. 5a; para. 237, 258);
a data processor (see processing unit-130 which has a processor) in communication with the marking composition activation trigger (fig. 3, 5a; para. 28, 41-42, 52, 237, 255, 259, 283);
a motion sensor (see camera system-112 or inertial measurement unit (IMU)-170) device in communication the data processor (fig. 5a, 5b, 6; para. 198, 218-221, 230-233, 236-237, 250, 261, 263, 267, 278, 283-284, 297); and
a data transfer interface (see interface-1195 and communications interface-134) communicable to provide motion sensor information to a separate device (see onsite computer-1612 or central server-1614 (fig. 5b, 6, 14; para. 237, 242, 256, 258, 333-335).
Nielsen does not explicitly teach a remote GPS applicator device (or GPS data generation device) communicable with the data processor, whereby the portable marking stick applicator does not comprise a GPS applicator device.
However, Nielsen-700 teaches a locate receiver (1610, separate smart computing device) comprising a location tracking system (1642). Nielsen-700 teaches the locate receiver wirelessly communicates with a marking device-110 and to a remote computer-1650 (separate smart computing device).
Nielsen-700 teaches information such as location is provided between the locate receiver (1610) and the marking device (110) and also with the remote computer-1650 (fig. 14-16; para. 245-246, 254, 258, 276-278).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the locate receiver and remote computer of Nielsen-700 onto the marking device of Nielsen, because Nielsen-700 teaches it will provide correlation of data (para. 363).
With regards to the claimed the portable marking stick applicator does not comprise the or another navigation module, Nielsen teaches alternatives to GPS-based techniques for tracking motion of the marking device (para. 230), such as the inertial measurement unit (IMU)-170, which provides acceleration, orientation, and gravitational forces by use of one or more inertial sensors, such as one or more accelerometers, gyroscopes, and compasses (para. 268).
In regards to claim 14, Nielsen and Nielsen-700, where Nielsen teaches the data transfer interface (see communications interface-134) is capable of being a Bluetooth communication interface (para. 256).
In regards to claim 15, Nielsen and Nielsen-700, where Nielsen-700 teaches the GPS is part of the control electronics-112 or part of an onsite/remote computer-150 (separate computing system), where the marking device-110 and the remote computer-150 have wireless interface communication (fig. 1-2; para. 104, 107, 112-114).
In regards to claim 16, Nielsen and Nielsen-700, where Nielsen-700 teaches the marking device-110 and the remote computer-150 have wireless interface communication (fig. 1-2; para. 104, 107, 112-114).
Claims 7-10 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Nielsen and Nielsen-700 as applied to claims 1-4 and 13-16 above, and further in view of Nielsen-175 (US 2011/0045175).
In regards to claims 7-10 and 18-22, Nielsen and Nielsen-700 as discussed, but do not explicitly teach a marking composition container identification module mounted to the marking stick body section and in communication with the data processor.
However, Nielsen-175 teaches a sensor-310 which is part of a cap color detection mechanism-300 (marking composition container identification module) is installed on a marking device-100. Nielsen-175 teaches the sensor communicates with device electronics-118 and provides information regarding color information of a marking material-112 (fig. 3-5; para. 115-120).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the sensor-310 and marking device-100 of Nielsen-175 onto the marking device of Nielsen and Nielsen-700, because Nielsen-175 teaches it will provide a comprehensive electronic record of information relating to marking operations that further facilitates ensuring the accuracy of such operations (para. 19).
Response to Arguments
Applicant's arguments filed April 6, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Nielson and Nielson 700 do not teach a data transfer interface communicable to provide motion sensor information to a separate smart computing device including a navigational module, whereby the intelligent marking stick applicator does not comprise the navigation module.
In response to Applicant’s arguments, please consider the following comments:
Nielson and Nielson-700 in combination do teach teaches the GPS has an option to be part of an onsite/remote computer-150 (separate smart computing device device) or locate receiver-1610. Nielson teaches the inertial measurement unit (IMU)-170 that provides tracking motion of the marking device (para. 230), such as acceleration, orientation, and gravitational forces by use of one or more inertial sensors, such as one or more accelerometers, gyroscopes, and compasses (para. 230, 268).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Binu Thomas whose telephone number is (571)270-7684. The examiner can normally be reached Monday to Thursday, 8:00AM-5:00PM PT.
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/Binu Thomas/Primary Examiner, Art Unit 1717
Prosecution Insights