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
Claims 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (method), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10 November 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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. 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.
Claims 1-2 recites the limitation “means for identifying the paint defect of the part,” associated in the specification with a camera (reference to applications 15/932,865 and 16/866,110 and expressly, [0035]). “Object inspection system” is considered to be either identical to or obviously similar to “means for identifying the paint defect of the part,” since the specification does not clearly distinguish structures with which each term is distinctively associated.
Claim 12 recites the limitation “dispenser control module” (generic placeholder: “module,” functional language: “dispenser control”) and associated with a control pilot unit, a pneumatic trigger, or a shaping gas unit [0056-0057].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 4, 13, 21, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Telleria et al. (US 2018/0283019).
Regarding Claim 1, Telleria et al. (US’019) teaches a system for repairing a paint defect of a part, comprising: means (camera) capable of identifying a paint defect of a part [0033,0101,0118,0141,0146]; a robotic applicator having a dispenser (spray nozzle) [0082] and an end effector with a pad, the end effector capable of controlling motion of the pad (Fig. 16; [0107,0146]), the robotic applicator capable of positioning the dispenser and the pad adjacent to the paint defect of the part (Figs. 3-5, 12-13,15, 18; [0023-0024,0028,0031,0041,0053-0060,0082,0084,0087-0089]), the dispenser capable of atomizing (spraying to aerosolize) a composition into an atomized (aerosolized) composition and disposing a predetermined amount of the spray composition on the paint defect (Fig. 12; [0012,0084]), and the end effector capable of working the predetermined amount of the atomized composition on the paint defect of the part with the pad [0008]; and a computer module (server 1710) in communication with the robotic applicator, the computer module capable of controlling the robotic applicator (Fig. 17; [0108, 0111-0112,0116,0121]. In addition, US’019 teaches an end effector with a pad (e.g. for sanding) [0107,0146], which, aside from being useful in itself for sanding, can also be changed for a new one [0146] based on information gathered by the means capable of identifying a paint defect about the finish of a surface [0146]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the system of CN’764 with a pad on an end effector, because US’019 suggests a pad as a component of a sanding head on an end effector and moreover, it can be changed based on data about a finish (e.g. surface defect).
US’019 fails to teach that the robotic applicator is configured to simultaneously position specifically the dispenser and the pad adjacent to a paint defect. However, US’019 teaches that either a plurality of manipulators can be used to complete one or more tasks with either a serial or parallel manipulator [0023]. Figure 15 shows an applicator with multiple tools [0099-0100] capable of performing multiple simultaneous operations [00960100] and Figure 18 shows multiple robots, capable of coordinating to dispense a fluid while simultaneously sanding. A single end effector can be configured to do a plurality of tasks, including dispensing a fluid and sanding [0052]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’019 so that it is capable of positioning simultaneously a dispenser and a pad adjacent to a paint defect of a part, because US’019 suggests an end effector capable of performing multiple tasks, including dispensing a fluid and sanding. The limitation “wherein the predetermined amount is calibrated to substantially cover the paint defect while minimizing application of the atomized composition to areas of the part adjacent to the paint defect” recites an intended use, not given patentable weight for the claimed apparatus, and US’019 suggests an apparatus, with obvious modifications, capable of the recited function.
Regarding Claim 2, “object inspection system” and “means for identifying the paint defect of the part” are considered interchangeable terms for a camera (see “Claim Interpretation” above), and the specification does not describe distinct structures associated with each term. US’019 teaches a camera in communication with the robotic applicator, whose movement is directed based on data collected by the camera (see citations in Claim 1, in particular (Fig. 3; [0031-0032,0038-0039,0146]).
Regarding Claim 4, US’019 teaches a gas supply to supply gas to the dispenser to assist in atomizing the composition [0084-0085,0090] (both implicitly in “air assisted” and “air streams” and expressly in “air cylinder”).
Regarding Claim 13, US’019 teaches the claimed apparatus, including a dispenser capable of atomizing a composition and disposing a predetermined amount of the atomized composition on the paint defect (see rejection of Claim 1 above). The remainder of the claim (“such that an adhesive force of the atomized composition on the paint defect is substantially greater than gravity, thereby minimizing movement of the atomized composition on the paint defect”) is an intended use and depends on process parameters (e.g. properties of a composition, properties of a defect) not part of the claimed apparatus.
Regarding Claim 21, the pad has a pad surface area by virtue of being a pad (See, also, Fig. 16) and the apparatus is capable of the recited intended use (i.e. capable of a function, wherein a predetermined amount of an atomized composition can have an applied composition surface area, wherein the pad surface area is greater than or equal to the applied composition surface area); the intended use is not give patentable weight for the claimed apparatus, and US’019 suggests an apparatus capable of the recited intended use. Neither a composition nor a specified amount of composition is a feature of the claimed apparatus. See the rejection of Claim 1 above.
Regarding Claim 22, US’019 teaches a waste remover (brush, sponge, wiper, vacuum port), which the robotic applicator is capable of positioning adjacent to a paint defect to remove excess waste from a predetermined amount of atomized composition (intended use, not given patentable weight for the claimed apparatus) [0107].
Claim(s) 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Telleria et al. (US 2018/0283019) in view of Clifford et al. (US 2007/0034715).
Regarding Claim 5, US’019 teaches an air assisted sprayer [0084] and suggests an air stream to control a shape of a spray from a composition outlet (Fig. 14; [0085,0090]). US’019 fails to teach a nozzle comprising a composition outlet and a gas outlet. However, nozzles with a composition outlet and a gas outlet were conventional at the time of invention (e.g. shaping ring). Clifford et al. (US’715) is analogous art in the field of atomization and teaches a rotary atomizer with a spray head comprising an air shaping ring with shaping air nozzles (Abstract; Fig. 1). In Fig. 1, paint enters injector 25 through supply line 27 and out through an outlet at the center of bell 24 (Fig. 1; [0034]), while air enters supply lines 32 and exits through outlet 31 [0038] to shape the paint stream exiting bell 24 (Fig. 1; [0039]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the system of US’019 with a dispenser, including a nozzle having both a composition outlet and a gas outlet, the nozzle configured to focus gas through the gas outlet and the composition through the composition outlet, because US’019 teaches shaping air to shape a stream of material spray, and US’715 suggests an atomizer with both a composition outlet and a gas outlet to shape a material stream sprayed from an sprayer.
Claim 6 does not recite any additional structural features of the obvious system of Claim 5, and only recites an intended use, not given patentable weight for the claimed apparatus. Moreover, the obvious apparatus is capable of performing the intended use, evidenced by the combination of US’019 in view of US’715, since air shapes a material stream of a composition through frictional forces. See, rejection of Claim 5 above for citations.
Regarding Claim 7, US’019 teaches nozzles with a fan shape or a bell shape and teaches that the diameter of a bell can be tuned by a sliding cone with expanding orifice size [0090-0091]. Moreover, a cone is a conventional shape for a nozzle, and “bell shape” can be considered round [0090]. US’715 teaches a conical spray tip (see frustroconical bell 24 and also spray outlet inside bell 24) (Fig. 1; [0034]). US’715 also provides evidence that the obvious sprayer is capable of spraying a round pattern (Figs. 1-2).
Regarding Claim 8, US’019 teaches a pump capable of moving a composition from a composition supply to a dispenser [0084].
Regarding Claim 9, US’019 teaches pressure regulators capable of regulating a pressure of the composition a desired flow rate of fluid [0051,0085,0140,0145]. US’019 fails to teach specifically a pump regulator in communication with each of the pump and the dispenser. Pressure regulators (e.g. valves and nozzles) were conventional devices of pumps and air compressors, which conventionally include pumps, at the time of invention to regulate pressure delivered by a pump. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’019 in view of US’715 with a conventional pump pressure regulator for fluids to control the pressure of material delivered to a unit (e.g. spray nozzle) from a unit (e.g. pump or supply container) to control the pressures of materials in a process requiring materials under pressure.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Telleria et al. (US 2018/0283019) in view of Clifford et al. (US 2007/0034715) as applied to Claim 9 above, and further in view of Geng et al. (CN109702764).
Regarding Claims 10-11, US’019 teaches an air assisted sprayer [0084]. The combination of US’019 in view of US’715 fails to teach a gas supply configured to regulate the pressure of the composition moved to the dispenser to be atomized or a gas regulator configured to adjust the gas supplied to the pump composition regulator. Geng et al. (CN’764) is analogous art in the field of spraying robots (Abstract). CN’764 teach a system capable of repairing a paint defect of a part, comprising: means (camera) for identifying (i.e. capable of identifying) the paint defect of the part, since it can receive depth information to identify features of a surface [0014]; a robotic applicator having a dispenser (nozzle 751) (Figs. 1-3; [0014]) and an end effector (tool holder 107, third wrist 106) with a sanding/polishing (grinding head 91) [0019], the end effector configured to control (i.e. capable of controlling) motion of the sanding/polishing head, the robotic applicator configured to position (i.e. capable of positioning) the dispenser and the sanding head adjacent to the paint defect of the part [0024, 0027-0028], the dispenser configured to atomize (capable of atomizing) a composition into an atomized composition and dispose a predetermined amount of the atomized composition on the paint defect [0027], and the end effector configured to work (capable of working) the predetermined amount of the atomized composition on the paint defect of the part with the sanding/polishing head [0028]; and a control console 4 in communication the robotic applicator, the control console configured to control the robotic applicator [0008,0014,0024-0025]. In addition, US’019 suggests a gas supply (air compressor 71) configured to pressurize a spray composition (paint) to deliver the spray composition from a supply tank to a nozzle (Fig. 1; [0027]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’019 in view of US’715 with a gas supply and a gas from the gas supply configured to regulate pressure of the composition moved to the dispenser to be atomized, because CN’764 suggests a gas and gas supply so configured to move a spray material from a composition supply to a spraying nozzle.
Regarding Claim 11, US’019 teaches pressure regulators capable of regulating a pressure of the composition a desired flow rate of fluid [0051,0085,0140,0145]. US’019 fails to teach specifically a pump regulator in communication with each of the pump and the dispenser or a gas regulator to adjust a pressure or a gas supplied to a pump composition regulator. Pressure regulators (e.g. valves and nozzles) were conventional devices of pumps and air compressors, which conventionally include pumps, at the time of invention to regulate pressure delivered by a pump. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of references with a conventional pump pressure regulator for a composition pump and a conventional air pressure regulator to regulate air or other gas from a gas or air supply in order to control the pressure of fluids (spray material or air or gas) delivered to a unit (e.g. spray nozzle) from a unit (e.g. pump or supply container) to control the pressures of materials in a process requiring materials under pressure.
Regarding Claim 12, US’019 teaches a computer module (server 1710) in communication with the robotic applicator, the computer module capable of controlling the robotic applicator (Fig. 17; [0108, 0111-0112,0116,0121] and suggests a dispenser control module that is capable of controlling the dispenser to adjust a spray pattern of the atomized composition when the atomized composition is disposed from the dispenser, and the dispenser control module configured to control when the dispenses the predetermined amount of the atomized composition, since it suggests a fully automated system capable of controlling a spray pattern as needed [0038,0090-0091].
Response to Arguments
Applicant’s amendment to the claims, filed 27 March 2026, with respect to the rejection of Claims 1-13 under 35 USC 112(b) has been fully considered and is persuasive. The rejection of Claims 1-13 under 35 USC 112(b) has been withdrawn.
The terminal disclaimer, filed 27 March 2026, with respect to the rejection of Claims 1-13 under double patenting has been fully considered and is persuasive. The rejection of Claims 1-13 under double patenting has been withdrawn.
Applicant’s amendment to the claims, filed 27 March 2026, with respect to the rejection of Claims 1-4 and 13 under 35 USC 102 has been fully considered and is persuasive. The rejection of Claims 1-4 and 13 under 35 USC 102 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the obviousness of the amended claims.
Applicant's arguments, filed 27 March 2026, with respected to the rejection of Claims 1-2, 4-19, and 21-22 under 35 USC 103 have been fully considered but they are not persuasive.
In response to Applicant’s argument that Claim 1 requires a robotic applicator having a both a dispenser and an end effector with a pad (Remarks, pp. 10-11), while US’019 fails to expressly teach that the effector includes both an effector with a pad and a dispenser which a robotic applicator is capable of simultaneously positioning, it would have been obvious to include both a dispenser and a pad together, which are capable of being simultaneously positioned, because: US’019 teaches that either a plurality of manipulators can be used to complete one or more tasks with either a serial or parallel manipulator [0023]. Figure 15 shows an applicator with multiple tools [0099-0100] capable of performing multiple simultaneous operations [00960100] and Figure 18 shows multiple robots, capable of coordinating to dispense a fluid while simultaneously sanding. A single end effector can be configured to do a plurality of tasks, including dispensing a fluid and sanding [0052]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’019 so that it is capable of positioning simultaneously a dispenser and a pad adjacent to a paint defect of a part, because US’019 suggests an end effector capable of performing multiple tasks, including dispensing a fluid and sanding. The limitation “wherein the predetermined amount is calibrated to substantially cover the paint defect while minimizing application of the atomized composition to areas of the part adjacent to the paint defect” recites an intended use, not given patentable weight for the claimed apparatus, and US’019 suggests an apparatus, with obvious modifications, capable of the recited function.
In response to Applicant’s argument that Claim 1 requires that a predetermined amount of atomized composition disposed on the paint defect is calibrated, etc. (Remarks, pp. 11-12), the present claims do not require this. The present claims require features of an apparatus capable of atomizing a composition, including a predetermined amount; this is an intended use recitation, not given patentable weight for the claimed apparatus, and the apparatus does not require the composition, which is an aspect of the recited intended use.
In response to Applicant’s argument that the “vision systems” of Telleria “perform an entirely different function” (Remarks, p. 12), the claims are directed to an apparatus with recited structural features. Intended use recitations are not given patentable weight. Additionally, the argument is not within the scope of the claims, which does not require a vision system that excludes surface profile or flatness, finish quality, etc.
In response to Applicant’s argument that Examiner conflates “object inspection system” and “means for identifying the paint defect” (Remarks, p. 13), the argument is problematic since the argument acknowledges that the term “means for identifying the paint defect” is associated with a structure (camera) but fails to indicate a structure clearly associated with the term “object inspection system” (generic placeholder: “system”, functional language: “object inspection”). If a term which combines a generic placeholder like “system” and functional language is not clearly associated with a structure in the specification as originally filed, the term will be considered indefinite under 35 USC 112(b). Examiner disagrees that this analysis broadens 112(f) construction.
In response to Applicant’s argument that Telleria’s vision systems are not structural equivalents, because they allegedly do not perform an identical function (Remarks, p. 12), the argument is not persuasive, 1) because Applicant defines the function too narrowly given the description in the specification and 2) because Examiner does not have to determine whether Telleria’s camera is an equivalent, since the Application associates a camera with the term, and Telleria teaches a camera including “conventional (2D visible) light imaging [0035]. The doctrine of equivalents is a question about whether some structure OTHER THAN THAT DESCRIBED in the specification is equivalent to that described in the specification. A camera is not a structural equivalent of a camera, but the thing itself.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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