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 .
Information Disclosure Statement
The Applicant has submitted 2 information disclosure statements (IDSs) dated 06/24/2025 and 02/03/2026, comprising pre-grant publications, patents, foreign patent documents, and/or non-patent literature (NPL) references, totaling more than 140 documents, which is excessive for any Examiner to have to consider at any level beyond a cursory review. In accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), stating that forcing the Examiner to find "a needle in a haystack" is "probative of bad faith." Id. The Molins case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references. These particularly long IDSs do not include any concise explanation of the relevance of any of the listed references nor cite any pages, columns, and lines (or paragraph numbers) where relevant passages or relevant figures appear. According to MPEP Section 2004 “Aids to Compliance With Duty of Disclosure [R-08.2012]”, “It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of most significance.” Additionally, per MPEP Section 609.04(a)(III): “applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.” See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v.Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
As such, even though these IDSs have been placed in the application file with the lists of references marked as considered, and the compilation of those listed PG Publications and Patent references have at least been key-word searched and/or classification searched for relevant prior art, the information referred to therein for each individual reference has admittedly not been fully considered beyond a cursory review. If Applicant wishes to have one or more references fully considered, the Examiner requests resubmitting the IDSs with a reasonable number of references that are known to be pertinent for the determination of patentability as defined by 37 C.F.R. § 1.56, along with the concise explanations as to relevance and citations explaining the locations of relevant passages or figures, as per 37 CFR 1.98(a)(3) and 37 CFR § 1.105.
Claim Objections
Claims 9-10, 19 are objected to because of the following informalities:
Regarding claim 9, the claim recites “wherein said step of creating a digital map is carried out by a first robot….”. Based on the claim language, the claim should read, “wherein said step of creating the digital map is carried out by a first robot….”.
Regarding claim 10, the claim recites “wherein said step of creating a digital map comprises locating features within the pipe relative to the scan frame of reference”. Based on the claim language, the claim should read, “wherein said step of creating the digital map comprises locating features within the pipe relative to the scan frame of reference”.
Regarding claim 19, the claim recites “The system of claim 15 wherein the controller receives the digital map that is created by a different robot, the controller being configured to determine a second frame of reference for sensors of the second robot”. Based on the claim language, the claim should read, “The system of claim 15 wherein the controller receives the digital map that is created by a first robot, the controller being configured to determine a second frame of reference for sensors of a second robot”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claim(s) 5-6, 8, 10, 15-16, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vallapuzha (US 8170715 B1) in view of Colbrunn (US 20210229279 A1).
Regarding claim 5, Vallapuzha teaches a method for scanning and cutting a liner in a pipe (Fig 4-5, col 7 lines 45-55) the method comprising,
creating a digital map of an environment using a plurality of sensors (col 10, lines 28-31 wherein a mapping of the pipe element is made using various sensors “A similar process can be used to create such a map without actually contacting the surface of the dimple. In this embodiment, a much more accurate dimple map can be built using different sensors”),
identifying a first location of a service based on a scan (col 2 lines 46-53, col 6 lines 55-60 wherein location of lateral openings wherein the hole will later be cut is identified; “Since the only requirement for the impedance method of the present invention is to get the tool to plunge inside the lateral opening, in pipes where there are no dimples (or in pipes that are filled with an opaque fluid which does not allow visual perception, the present methods can still be employed with accurate odometry and clocking information on the location of the lateral openings from a pre-lining inspection”; “The blocked lateral connection is located either automatically using previously input data regarding the location of service connections or some other sensing mechanism, or it may be located manually using a reel payout sensor and onboard video cameras”),
navigating a robot to the first location utilizing the digital map (col 6 lines 44-48, col 6 lines 66- col 7 line 3, col 8 lines 61-64 wherein the robot navigates to the lateral opening location for cutting; “Because this robot acts autonomously when on a mission to perform some type of work, the onboard high level software includes mission planning and navigational control”; “The robot's cutting tool is then aimed approximately over the center of the blocked connection, and its position is manually confirmed either visually or by using a dimple map generated using scanning data”; “After the cutting is completed, the clamps locking the robot in place can be released, and the robot can be moved to another blocked lateral connection and repeat the process for automated reinstatement”),
computing a cutting path based upon the digital map; and executing a cut at the first location (Fig 4-5, col 7 lines 24-26, col 3 lines 35-40 wherein cutting path is determined and executed; “Cutting of the lining material then proceeds as illustrated in FIG. 4, which depicts a cross section of a pipe with arrows indicating the direction of cutting”; “One exemplary embodiment according to the present invention provides methods for automatically cutting along the edge of a lateral/main pipe interface using cutting tools contained in autonomous robotic devices after the main line has been relined”).
However, Vallapuzha fails to teach first location of a service is based on a scan frame of reference, navigating the robot based on a robot frame of reference.
Colbrunn teaches having various frame of reference including sensor frame of reference (0052 wherein “The controller 96 can also receive initial position and orientation data of the primary sensor 104 in the coordinate system from the primary sensor and initial position and orientation data of the at least one ancillary sensor 106 in the coordinate system from the at least one ancillary sensor”) and robot frame of reference for robot navigation (0071 wherein “WORLD 2 represents the static coordinate system of the robot where it is mounted and the robot's positions are reported relative to WORLD 2”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Vallapuzha’s teachings of having a robot for scanning and cutting a liner and identifying service position based on the scan to incorporate Colbrunn’s teachings of having various frame of reference during robot operation in order to have first location of a service based on a scan frame of reference and navigating the robot based on a robot frame of reference. Using various frames of references during scanning and navigating would constitute combining prior art elements according to known methods to yield predictable results.
Regarding claim 6, Vallapuzha teaches identifying a second location of a second service and navigating the robot to the second location and executing a cut at the second location (col 2 lines 51-53, col 8 lines 61-64 wherein locations of the blocked lateral openings are identified and the robot is navigated to reinstate them; “the present methods can still be employed with accurate odometry and clocking information on the location of the lateral openings from a pre-lining inspection”; “After the cutting is completed, the clamps locking the robot in place can be released, and the robot can be moved to another blocked lateral connection and repeat the process for automated reinstatement”).
Regarding claim 8, Vallapuzha teaches computing the cutting path includes consideration of at least one of a type of cut, a bit selected for use to make the cut and a speed at which the cut is to be made (col 8 lines 24-29 wherein the cutting path is computed with respect to the speed of the cutting tool; “Once the edge is detected, the cutting vector (direction and speed) of the cutting tool can be adjusted, for example, by choosing a vector slightly less than parallel to the contacted edge vector, which can be approximated by, for example, detected changes in the cutting vector upon encountering the edge”).
Regarding claim 10, modified Vallapuzha teaches having a scan frame of reference and creating a digital map comprises locating features within the pipe as discussed in claim 1. However, Vallapuzha fails to teach defining the scan frame of reference relative to a location in a global frame of reference and creating a digital map comprises locating features within the pipe relative to the scan frame of reference.
Colbrunn teaches defining the scan frame of reference relative to a location in a global frame of reference (para 0071 wherein the sensor coordinate system for scanning the positions of environment are defined in a world coordinate system; “As shown in (a) and/or (b), WORLD 1 represents the global static coordinate system that the position of all ancillary sensors and other coordinate systems can be expressed in”) as well as creating position data relative to the scan frame of reference (0052 wherein “Optionally the initial position and orientation data of the primary sensor 104 and/or the at least one ancillary sensor 106 can be transformed into the coordinate system if it is detected in another coordinate system. The controller 96 can determine the static relationship between the primary sensor 104 and the object 92 based on the initial position and orientation data of the primary sensor and the known initial position and orientation of the point on the object”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Vallapuzha’s teachings of having a scan frame of reference and creating a digital map comprises locating features within the pipe to incorporate Colbrunn’s teachings of defining the scan frame of reference relative to a location in a global frame of reference as well as creating position data relative to the scan frame of reference in order for defining the scan frame of reference relative to a location in a global frame of reference and creating a digital map comprises locating features within the pipe relative to the scan frame of reference. Doing so would constitute combining prior art elements according to known methods to yield predictable results.
Regarding claim 15, Vallapuzha US 8170715 B1 teaches a system for scanning and cutting a liner in a pipe (Fig 4-5, col 7 lines 45-55), the system comprising a robot having a cutting tool operable to cut through the liner (Col 5 lines 48-52 wherein “In at least one preferred embodiment, the robot contains a cutting tool that can automatically cut along the edge of a pipe opening for reinstating lateral pipe connections following pipe rehabilitation”), and
a controller for controlling operation of the robot (abstract, “A robot, which may be tethered or un-tethered, includes a computer controller and a work tool for performing work within the pipe”),
the controller being configured to reference a digital map of an environment using a plurality of sensors made in a scan of the pipe (col 10, lines 28-31 wherein a mapping of the pipe element is made using various sensors “A similar process can be used to create such a map without actually contacting the surface of the dimple. In this embodiment, a much more accurate dimple map can be built using different sensors”),
the controller being configured to identify a first location of a service based on a scan (col 2 lines 46-53, col 6 lines 55-60 wherein location of lateral openings wherein the hole will later be cut is identified; “Since the only requirement for the impedance method of the present invention is to get the tool to plunge inside the lateral opening, in pipes where there are no dimples (or in pipes that are filled with an opaque fluid which does not allow visual perception, the present methods can still be employed with accurate odometry and clocking information on the location of the lateral openings from a pre-lining inspection”; “The blocked lateral connection is located either automatically using previously input data regarding the location of service connections or some other sensing mechanism, or it may be located manually using a reel payout sensor and onboard video cameras”), and
navigating the robot to the first location utilizing the digital map (col 6 lines 44-48, col 6 lines 66- col 7 line 3, col 8 lines 61-64 wherein the robot navigates to the lateral opening location for cutting; “Because this robot acts autonomously when on a mission to perform some type of work, the onboard high level software includes mission planning and navigational control”; “The robot's cutting tool is then aimed approximately over the center of the blocked connection, and its position is manually confirmed either visually or by using a dimple map generated using scanning data”; “After the cutting is completed, the clamps locking the robot in place can be released, and the robot can be moved to another blocked lateral connection and repeat the process for automated reinstatement”),
the controller being programmed to compute a cutting path based upon the digital map; and control the cutting tool to execute a cut of the liner at the first location (Fig 4-5, col 7 lines 24-26, col 3 lines 35-40 wherein cutting path is determined and executed; “Cutting of the lining material then proceeds as illustrated in FIG. 4, which depicts a cross section of a pipe with arrows indicating the direction of cutting”; “One exemplary embodiment according to the present invention provides methods for automatically cutting along the edge of a lateral/main pipe interface using cutting tools contained in autonomous robotic devices after the main line has been relined”).
However, Vallapuzha fails to teach to reference the digital map of an environment made in scan of the pipe prior to lining the pipe with the liner, first location of a service is based on a scan frame of reference, navigating the robot based on a robot frame of reference.
Vallapuzha further teaches making scan of the pipe prior to lining the pipe with the liner (col 6 lines 55-60 wherein a pre-lining inspection is provided that provides locations of the openings; “Since the only requirement for the impedance method of the present invention is to get the tool to plunge inside the lateral opening, in pipes where there are no dimples (or in pipes that are filled with an opaque fluid which does not allow visual perception, the present methods can still be employed with accurate odometry and clocking information on the location of the lateral openings from a pre-lining inspection”).
Colbrunn teaches having various frame of reference including sensor frame of reference (0052 wherein “The controller 96 can also receive initial position and orientation data of the primary sensor 104 in the coordinate system from the primary sensor and initial position and orientation data of the at least one ancillary sensor 106 in the coordinate system from the at least one ancillary sensor”) and robot frame of reference for robot navigation (0071 wherein “WORLD 2 represents the static coordinate system of the robot where it is mounted and the robot's positions are reported relative to WORLD 2”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Vallapuzha’s teachings of having a robot for scanning and cutting a liner and identifying service position based on the scan to incorporate Vallapuzha’s teachings of making scan of the pipe prior to lining the pipe and Colbrunn’s teachings of having various frame of reference during robot operation in order to reference the digital map of an environment made in scan of the pipe prior to lining the pipe with the liner, and have first location of a service based on a scan frame of reference and navigating the robot based on a robot frame of reference. Doing so would allow the robot to establish the pipeline mapping information more accurately using multiple sensors prior to the lining. Furthermore, using various frames of references during scanning and navigating would constitute combining prior art elements according to known methods to yield predictable results.
Regarding claim 16, it is rejected for the same reasons as provided in the rejection of claim 6
mutandis mutatis.
Regarding claim 18, it is rejected for the same reasons as provided in the rejection of claim 8
mutandis mutatis.
Claim(s) 7, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vallapuzha (US 8170715 B1) and Colbrunn (US 20210229279 A1) in view of Williams (US 20160297072 A1).
Regarding claim 7, Vallapuzha teaches identifying the first location (col 2 lines 51-54 wherein “the present methods can still be employed with accurate odometry and clocking information on the location of the lateral openings from a pre-lining inspection”). However, Vallapuzha fails to teach determining the first location based on distance from an origin.
Williams teaches determining the first location based on distance from an origin (0055 wherein locations are determined based on distance from the origin; “Then, as the robot drives during the wall following behavior or during the coverage behavior, the values of all cells along its path are set to traversable, the location of the cells being determined by the distance to the origin”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Vallapuzha’s teachings of identifying the first location to incorporate Williams’ teachings of determining the first location based on distance from an origin. Doing so would constitute combining prior art elements according to known methods to yield predictable results.
Regarding claim 17, it is rejected for the same reasons as provided in the rejection of claim 7
mutandis mutatis.
Allowable Subject Matter
Claims 9, 19 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 and pending resolution of any objections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAGAR KC whose telephone number is (571)272-7337. The examiner can normally be reached M-F 8:30 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Mott can be reached at (571) 270-5376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAGAR KC/Examiner, Art Unit 3657
/ADAM R MOTT/Supervisory Patent Examiner, Art Unit 3657