DETAILED ACTION
The following is a FINAL Office action (“Action”) is based on the Response filed Nov. 4, 2025 (“Nov. Resp.”), which is in reply to the non-final Office action (“NF OA”) mailed June 4, 2025 in the reissue application filed July 2, 2024 from U.S. Patent No. 10,046,381 (U.S. patent application no. 14/559,855) (hereinafter “’381 patent”).
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 Leahy-Smith American Invents Act (“AIA ”). All references to 35 U.S.C. 251 and 37 CFR 1.172, 1.75, and 3.73 are to the current provisions enacted under AIA . See Federal Register, Vol. 77, No. 157, pg. 48820, August 16, 2012.
Response to Arguments and Submissions
Reissue Oath/Declaration Objection and 35 U.S.C. § 251 Rejection and 3.73(c) Objection
The previously presented objection to the reissue oath and declaration and claim rejections under section 251 in the NF OA are withdrawn in light of the newly executed reissue oath/declaration submitted with the Nov. Resp.
Also, the previously presented objection to the statement under 3.73(c) in the NF OA is withdrawn in light of the newly executed statement under 37 CFR 3.73(c) submitted with the Nov. Resp.
Previously Presented Claim Rejections Under 35 U.S.C. §§ 112(a), 112(b) for Lack of Written Description and Indefiniteness1
The previously presented rejections of claims 1-40 under section 112(a) for lack of written description and section 112(b) for indefiniteness are withdrawn for the reasons below.
Applicant argues with respect to the section 112(a) rejections that one of ordinary skill in the art would have understood the inventors had possession of the claimed invention because “the possibility of different levels of sophistication in computation for different levels of tolerance is a well known and accepted characteristic of manufacturing and positioning.” Nov. Resp. 10. In other words, Applicant’s argument is understood to be that there is sufficient description in the specification of corresponding claim limitations to show possession under section 112(a) given that the technology is not so complex so as to require a detailed explanation, especially in light of the given techniques being well-known. While the description of the corresponding claim limitations as previously noted in the section 112(a) claim rejections is general, the level of complexity of imaging a fuselage based on fasteners attached to the fuselage and positioning an “end effector” based on this imaging is not so great as to require more than the general description to show possession of the current claim scope under section 112(a).
Similar to the reasoning above, the claims previously rejected as indefinite in the NF OA based on the noted claim terms are withdrawn since these terms, when read in light of the specification and based on Applicant’s arguments, would generally be understood.
Lastly, Applicant points to at least column 32, line 32 through column 33, line 67 of the ‘381 patent for support of the term “meso-positioning.” Nov. Resp. 12. This section of the ‘381 patent must also be read in light of column 31, line 59 through column 32, line 32 and column 33, line 21 through column 34, line 67 to get a complete understanding of the differences of “macro-positioning,” “meso-positioning,” and “micro-positioning,” as they relate to the movement of a mobile platform, robotic base, and end effector, as recited in the claims.
Claim Interpretation Under 35 U.S.C. § 112(f) and Corresponding Claim Rejections Under Sections 112(a) and 112(b)
Applicant’s arguments with respect to the invocation of section 112(f) for limitations recited in at least independent claim 29, and thus too, the arguments with respect to those sections 112(a) and 112(b) claim rejections for lack of written description and indefiniteness have been considered but they are not persuasive for the following reasons.
Applicant essentially argues that there is no section 112(f) invocation because there is no recitation of “means” in the claims, there is no transition word or phrase, and the phrases “imaging system” and “control system” would be understood by a person of ordinary skill in the art “to have sufficiently definite meaning as the name for structure.” Nov. Resp. 10. Applicant likens the phrases “imaging system” and “control system” to the terms “screwdriver” and “driver,” which are known structures, thus too are the claim terms at issue. Id. These arguments are not persuasive for the following reasons.
Initially, section 112(f) can still be invoked without the phrase “means for” followed by functional language in the claims. See MPEP § 2181, subsection I.A. In this case, the terms “system” are generic placeholders since they are not known as any particular structure. Additionally, the term “configured to” is a recognized transition phrase. Id. Lastly, the terms “imaging” and “control” describe a function of the associated “system,” they do not describe a physical structure unlike other terms such as, “screwdriver” or “driver.” Section 2181, subsections I.A and I.C, of the MPEP also provide additional examples of terms the courts have found to invoke section 112(f) that do not connote any well-known structure, as well as terms that are understood to have structure. The courts have found terms like “colorant selection mechanism,” “level moving element,” and “movable link member” to not have a “generally understood meaning in the art” that is structural, unlike terms such as, “filters,” “brakes,” “clamp,” “screwdriver,” and “locks.” Just like the generic placeholders identified in the MPEP, the terms “imaging” and “control,” which modify the term “system,” are functional and descriptive (e.g., they are adjectives), as opposed to the claim terms found to not be generic placeholders, which are structures (e.g., they are nouns). Moreover, Applicant does not provide any evidence that the terms “imaging system” and “control system” have a recognized and understood structure in the art to avoid section 112(f) invocation.
For at least these reasons, applicant’s arguments with respect to the section 112(f) invocation analysis of limitations in claim 29 are unpersuasive.
Lastly, as noted below, the term “control system” and associated claim functions are described in sufficient detail in the specification of the ‘381 patent to show the corresponding structure associated with the section 112(f) interpretation. However, outside of the claims, the term “imaging system” appears only six times in the ‘381 patent (col. 30, ll. 44-48, col. 34, ll. 64-67, and col. 35, ll. 9-22) and none of these includes a description of what structures would correspond to the recited “imaging system configured to” carryout the claimed function. Additionally, the reference numeral corresponding to the “imaging system” (i.e., 635) is only shown in Figs. 6 and 7, but these figures are simply block diagrams that show no structure.
While Applicant argues that a person of ordinary skill in the art would have understood what an “imaging system configured to” perform various functions is (see Nov. Resp. 9-11), section 112(f) requires that the broadest reasonable interpretation of a section 112(f) limitation be limited to “the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act.” MPEP § 2181. (Emphasis added.) Whether a person of ordinary skill would have understood what an “imaging system” is outside of the description in the specification is not a substitute for the requirement that the specification must still describe at least some structure of a 112(f) limitation. Since the current specification does not even describe a single corresponding structure of the claimed “imaging system” as interpreted under section 112(f), this limitation is the basis for a lack of written description rejection under section 112(a) and indefiniteness rejection under section 112(b).
For the reasons above, Applicant’s arguments with respect to the claim rejections under sections 112(a) and 112(b) based on the section 112(f) interpretation are not persuasive.
Objection – Claims
Claims 2, 11, 23, and 24 are objected to because the markings are not proper for showing the changes with respect to the original patent as required under 37 CFR § 1.173(b)(2),(d),(g). Specifically, the noted claims have changes that are not shown in underlining or bracketing. See MPEP § 1453. Claims 2, 11, and 24 each recite “meso-positioning” in the original patented claims, but now recite “mesa-positioning” with no amendment markings. Claim 23 recites “at an end of the end effector” in the original patented claim, but now recites “at an end of effector” with no amendment markings.
As a reminder, all amendments must be with respect to the original patent regardless of previous filings in the reissue (see 37 CFR § 1.173(g)), and all deleted claim limitations must be enclosed in single brackets while added claim limitations must be singly underlined (see 37 CFR § 1.173(b)(2),(d)). It is noted in this case, if applicant merely wishes to revert back to the original claim language, all that need be filed is a new set of originally patented claims of the ‘381 patent with no changes.
Appropriate correction is required.
Claim Interpretation – 35 USC § 112(f) – “Means plus Function”
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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. See MPEP § 2111. 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) 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):
(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”.
(C) The term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
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) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not modified by a structural modifier. Because these claim limitations are being interpreted under 35 U.S.C. 112(f) they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The following are the limitations in the claims interpreted under section 112(f).
Claim 29
In the second clause in the body of the claim, “an imaging system configured to generate imaging data” includes the generic placeholder “system” linked by the transition phrase “configured to” and performs the function of “generat[ing] imaging data.” Additionally, the term “imaging,” which modifies the “system,” is not structural, so this limitation is interpreted under section 112(f).
Please see the 35 U.S.C. § 112(a),(b) rejections below of claim 29 because the specification does not provide any corresponding description of structure as required under section 112(f).
In the third clause in the body of the claim, “a control system that is configured to control positioning of an end effector …, to identify a set of actual reference locations” includes the generic placeholder “system” linked by the transition phrase “configured to” and performs the function of “control[ing] positioning of an end effector” and “identify[ing] a set of actual reference locations.” Additionally, the term “control,” which modifies the “system,” is not structural, so this limitation is interpreted under section 112(f).
The specification at col. 58, lines 35-67 and col. 59, lines 29-59 of the ‘381 patent describes the data processing system of Fig. 29, which includes a processor unit 2904 (e.g., “at least one of a number of processors, a multi-processor core, or some other type of processor,” “a circuit system, an application specific integrated circuit (ASIC), a programmable logic device) that carries out the programed functions, such as “control[ing] positioning of an end effector” and “identify[ing] a set of actual reference locations.”
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claim 29 – “Means plus Function” Limitations
Claim 29 is rejected under 35 U.S.C. 112(a) and 112(b) as failing to comply with the written description requirement and for being indefinite, respectively. Claim 29 recites limitations that invoke 35 U.S.C. 112(f) as explained above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In particular, there is no place in the specification that describes the type of “imaging system” that may be used to “generate imaging data,” as claimed. Therefore, these limitations lack written description under 35 U.S.C. § 112(a) and are indefinite under 35 U.S.C. 112(b), and independent claim 29, as well as dependent claims 30-40, are rejected under both section 112(a) and section 112(b).
As explained above Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f).
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)).
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)).
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2, 11, and 24
Claims 2, 11, and 24 recite, “mesa-positioning” and are indefinite because this term does not appear anywhere in the ‘381 patent nor is the term “mesa” an understood prefix or term of art. Thus, this term is not defined and is indefinite. While it is likely a typo, and what is meant is “meso-positioning,” claims 2, 11, and 24 are nonetheless rejected under section 112(b).
Allowable Subject Matter
Claims 1, 3-10, 12-23, and 25-28 are allowed over the prior art cited of record, notwithstanding the claim objections above. Claims 2, 11, and 24, which depend from claim 1, would also be allowable if the section 112(b) rejections of these claims, as explained above, are remedied.
The following is an examiner’s statement of reasons for allowance: none of the prior art of record teaches or suggests, either alone or when combined, all of the limitations recited in at least independent claim 1. Specifically, in combination with all other limitations, none of the prior art teaches or suggests at least “fuselage target locations for fuselage laser targets attached to the fuselage assembly,” “each point in [a] set of reference points comprises a point on a reference fastener located at a reference location on the fuselage assembly,” “identifying a set of actual reference locations for the set of reference points on the fuselage assembly using imaging data from an imaging system,” and “positioning the end effector at an operation location based on the set of actual reference locations identified.” As previously cited, Georgeson teaches a similar automated scanning system for inspection of workpieces, such as a fuselage assembly, with “calibration points (i.e., optical targets) 102a-102c” and “calibration points 104a-104c,” but only “calibration points 102a-102c” are attached to the fuselage, “calibration points 104a-104c” are attached to the “motion platform.” See Georgeson2, ¶83, Figs. 7B-11; see also U.S. Patent No. 7,743,660, to Marsh et al., 3:59-4:4, Fig. 8, targets 210, U.S. Patent Application Publication No. 2013/0185925, to Sarh et al., ¶¶41-47, Fig. 7.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 7,743,660 and U.S. Patent Application Publication No. 2013/0185925 each describe a system for imaging an objection, such as an airplane, and based on reference points moving a robotic machine or platform.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA KADING whose telephone number is (571) 270-3413. The examiner can normally be reached Monday-Friday, 8:00 AM to 5:00 PM Eastern Time.
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/JOSHUA KADING/
Reexamination Specialist, Art Unit 3993 Conferees:
/MATTHEW J KASZTEJNA/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/ SPRS, Art Unit 3993
1 These are separate from the sections 112(a) and 112(b) claim rejections based on the section 112(f) interpretation.
2 U.S. Patent Application Publication No. 2015/0329221, to Georgeson et al. (“Georgeson”).