Prosecution Insights
Last updated: October 02, 2026
Application No. 18/892,405

PAINTING DEVICE

Final Rejection §102§103§112
Filed
Sep 22, 2024
Priority
Oct 31, 2023 — JP 2023-186330
Examiner
ONDREJCAK, ANDREW DOMENIC
Art Unit
3752
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
ABB Schweiz AG
OA Round
2 (Final)
41%
Grant Probability
Moderate
3-4
OA Rounds
1y 2m
Est. Remaining
71%
With Interview

Examiner Intelligence

Grants 41% of resolved cases
41%
Career Allowance Rate
9 granted / 22 resolved
-29.1% vs TC avg
Strong +30% interview lift
Without
With
+29.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
39 currently pending
Career history
64
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
43.1%
+3.1% vs TC avg
§102
22.6%
-17.4% vs TC avg
§112
33.0%
-7.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 22 resolved cases

Office Action

§102 §103 §112
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 . Status of Claims Claims 1-5 are amended. Therefore, claims 1-5 are currently pending and have been considered below. Response to Amendment The amendment filed on 07/09/2026 has been entered. Applicant's amendment overcomes the following: Drawing objections Existing 35 USC § 112(b) Rejections Claim Rejections - 35 USC § 112 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. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 1-5 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites the limitation “wherein the plurality of sections being are configured to be individually cleaned in order from (emphasis) the upstream side of the paint circulation supply path” in lines 8-9 of claim 1. However, the claim fails to describe to (emphasis) where the sections are to be individually cleaned. The examiner will interpret this limitation as “wherein the plurality of sections being are configured to be individually cleaned in order from the upstream side of the paint circulation supply path continuing along the paint circulation path to the downstream side of the return flow path.” Claims 2-5 depend on claim 1, therefore claims 2-5 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Claim Rejections - 35 USC § 102 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. (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(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamauchi (JP 6979546). Regarding claim 1, Yamauchi discloses a painting device (Fig. 2, all structural features) comprising: a paint head (Fig. 2, 47) for ejecting paint; a supply path (Fig. 2, 48a-48i) that supplies the paint to the paint head; a return flow path (Fig. 2, 49a-49e) that returns the paint not ejected from the paint head to an upstream side of the supply path (Fig. 2, Side of 46 of the supply path) and the paint head; and a paint circulation path (Fig. 2, 41) including the supply path, the paint head, and the return flow path, the paint circulation path being divided into a plurality of sections (Fig. 2, {GS1, FS, DS, HS, GS2})), wherein the plurality of sections are configured to be individually cleaned in order from the upstream side of the supply path (Para. 0028, 0059-60), and when cleaning for one of the sections is completed and a next section is to be cleaned (Para. 0088 – “while it is stated that the above-mentioned sections can be cleaned individually, cleaning them individually includes not only cleaning one of the sections sequentially”; The sections can be individually and sequentially cleaned), the paint is sequentially filled into the one of the sections for which cleaning has been completed (Para. 0036-0039, 0041, 0046, 0053, 0117-0120); The device can structurally complete this limitation using the switching valves 66-68 and 71 because of the valve parts for example. Further evidence of this is shown in Para. 0061, which describes cleaning section GS1, followed by Para. 0062 which describes cleaning section FS without disturbing GS1.). 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) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi in view of Sandkleiva (US 5,964,407). Regarding claim 2, Yamauchi discloses the painting device according to claim 1. Yamauchi further discloses the painting device comprising: an inlet side switching valve (Fig. 2, 68) interposed in the paint circulation path connecting a head section (Fig. 2, HS) including the paint head and an upstream section adjacent to the upstream side of the head section (Fig. 2, DS), wherein the inlet side switching valve is configured for filling the upstream section with the paint and (underline to emphasize difference from applicants claimed language) flowing a cleaning liquid for cleaning into the head section (Para. 0036-0040, 0046-0048). Yamauchi does not disclose wherein the inlet side switching valve is configured for filling the upstream section with the paint while flowing the cleaning liquid for cleaning into the head section. However, Sandkleiva teaches a prior art comparable painting robot (Figs. 2-3) comprising a switching valve (Fig. 3, 11-13) for filling a section (Fig. 3, 16) with paint while flowing a cleaning liquid to another section (Fig. 3, 15; Col. 2: Ln. 57-60). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include the teachings Sandkleiva (a switching valve for filling a section with paint while flowing a cleaning liquid to another section) into the inlet side switching valve, which results in the inlet side switching valve is configured to fill the upstream section with the paint while flowing the cleaning liquid for cleaning into the head section to provide a short interruption time for a change between two colors (Sandkleiva – Col. 2: Ln. 57-60). Regarding claim 3, Yamauchi in view of Sandkleiva teaches the painting device according to claim 2. Yamauchi further discloses the painting device comprising: an outlet-side switching valve (Fig. 2, 71) disposed in the paint circulation path connecting the head section and a downstream section (Fig. 2, GS2) adjacent to a downstream side of the head section, the outlet-side switching valve configured to fill the downstream section with paint and (underline to emphasize difference from applicants claimed language) flowing the cleaning liquid for cleaning into the head section (Para. 0036-0040, 0053-0056). However, Sandkleiva teaches a prior art comparable painting robot (Figs. 2-3) comprising a switching valve (Fig. 3, 11-13) for filling a section (Fig. 3, 16) with paint while flowing a cleaning liquid to another section (Fig. 3, 15; Col. 2: Ln. 57-60) Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include the teachings Sandkleiva (a switching valve for filling a section with paint while flowing a cleaning liquid to another section) into the outlet-side switching valve, which results in the outlet-side switching valve configured to fill the downstream section with the paint while flowing the cleaning liquid for cleaning into the head section to provide a short interruption time for a change between two colors (Sandkleiva – Col. 2: Ln. 57-60). Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi in view of Sandkleiva, Konase, and Rasmussen (US 8,474,930). Regarding claim 4, Yamauchi in view of Sandkleiva teaches the painting device according to claim 3. Yamauchi further discloses the painting device comprising: an upstream switching valve (Fig. 2, 65) interposed in the supply path upstream of the inlet side switching valve; and a downstream switching valve (Fig. 2, 73) interposed in the return flow path downstream of the outlet-side switching valve. Yamauchi in view of Konase does not disclose and a bypass passage connecting the upstream switching valve and the downstream switching valve, wherein, during the cleaning of the head section, the upstream switching valve and the downstream switching valve are connected via the bypass passage, so that the paint in the supply path flows into the return flow path via the bypass passage and flows back from the downstream switching valve to the outlet-side switching valve. However, Konase teaches a prior art comparable droplet spray coating apparatus (Fig. 4, all structural features) comprising an upstream switching valve (Fig. 4, V4) interposed in the supply path (Fig. 4, 31); and a downstream switching valve (Fig. 4, V6) interposed in the return flow path (Fig. 4, 32), and a bypass passage (Fig. 4, 34) connecting the upstream switching valve and the downstream switching valve, wherein, during the cleaning of a head section (Fig. 6, H), the upstream switching valve and the downstream switching valve are connected via the bypass passage (Para. 0028, 0070-0071, 0073), so that the paint in the supply path flows into the return flow path via the bypass passage (Para. 0072). Therefore, the examiner finds that the prior art contained the painting device taught by Yamauchi in view of Sandkleiva upon which the claimed invention can be seen as an "improvement,” that the prior art contained a "comparable" device, namely the droplet spray coating apparatus taught by Konase that has been improved the same way as the claimed invention, namely wherein, during the cleaning of a head section, the upstream switching valve and the downstream switching valve are connected via the bypass passage, so that the paint in the supply path flows into the return flow path via the bypass passage, and that one of ordinary skill in the art could before the effective filing date of the claimed invention have applied the known "improvement" technique in the same way to the "base" device (method, or product) and the results would have been predictable to one of ordinary skill in the art, namely circulating paint during the cleaning of the head section with the benefit of circulating fluid through the bypass passage with the benefit of preventing the sedimentation of materials in the liquid (Para. 0072), with a reasonable expectation of success. Yamauchi in view of Sandkleiva and Konase does not teach wherein the paint flows back from the downstream switching valve to the outlet-side switching valve. However, Rasmussen teaches circulating the paint in a counterclockwise direction (Col. 4: Ln. 23-38; Col. 4: Ln. 57-61). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate circulating the paint in a counterclockwise direction so that paint flows back from the downstream switching valve to the outlet-side switching valve to maintain colored pigments within the paints suspension and to prevent clogged nozzles (Col. 4: Ln. 57-61). However, Yamauchi, further discloses a pump (Fig. 2, 72) disposed in the return flow path and returns the paint in the return flow path to the upstream side of the supply path Additionally, Rasmussen teaches a pump (Fig. 1, 17) that can be rotated in either direction to cause paint to flow in either direction (Col. 4: Ln. 23-38), and further to circulate the paint in a counterclockwise direction. Regarding claim 5, Yamauchi in view of Sandkleiva, Konase, and Rasmussen teaches the painting device according to claim 4. Yamauchi further discloses wherein a pump (Fig. 2, 72) is disposed in the return flow path. Rasmussen further teaches a pump (Fig. 1, 17) that can be rotated in either direction to cause paint to flow in either direction (Col. 4: Ln. 23-38), and further to circulate the paint in a counterclockwise direction. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the pump that can be rotated in either direction taught by Rasmussen by replacing int with the pump disclosed by Yamauchi and operating it in the direction so that paint flows back from the downstream switching valve to the outlet-side switching valve to maintain colored pigments within the paints suspension and to prevent clogged nozzles (Col. 4: Ln. 57-61). Response to Arguments Applicant's arguments filed 07/09/2026 have been fully considered but they are not persuasive. Regarding the argument on page 7 (35 USC § 102 rejection of claim 1) that “Yamauchi does not disclose that the paint is sequentially filled into a cleaned section when a next section is to be cleaned.” The Examiner respectfully disagrees because Yamauchi explicitly discloses this in Para. 0088 “Furthermore, while it is stated that the above-mentioned sections can be cleaned individually, cleaning them individually includes not only cleaning one of the sections sequentially (emphasis), but also cleaning two adjacent sections simultaneously, or cleaning every other section simultaneously. Regarding the argument on page 7-8 (35 USC § 102 rejection of claim 1) that “Yamauchi does not disclose that the sections are individually cleaned in order from the upstream side.” The examiner respectfully disagrees because Para. 0088 explicitly discloses cleaning the sections individually and sequentially and Para. 0059-0060 recites “the paint circulation path 41 described above is divided into multiple sections, and each section can be cleaned individually” and further discloses the order of operating the elements (valves, pumps, paint head) to clean the sections sequentially (Fig. 2, 65 [Wingdings font/0xE0] 66 [Wingdings font/0xE0] 67 [Wingdings font/0xE0] 68 [Wingdings font/0xE0]47 [Wingdings font/0xE0] 71 [Wingdings font/0xE0] 72 [Wingdings font/0xE0] 73). Regarding the argument on page 8 (35 USC § 102 rejection of claim 1-3) that “Yamauchi does not disclose switching valves configured for filling a section with paint while flowing cleaning liquid into the head section,” the limitation was rendered obvious as outlined in the office action. Regarding the argument on page 9 (35 USC § 103 rejection of claim 4) that “neither reference teaches paint flowing back from the downstream,” the limitation was rendered obvious as outlined in the office action. Regarding the argument on pages 9-10 (35 USC § 103 rejection of claim 4) that “the stated motivation does not support the combination,” the Examiner respectfully disagrees because firstly because a teaching, suggestion, or motivation to combine references that is found in the prior art is an appropriate rationale for determining obviousness (MPEP 2145-X-C). Secondly the fact that Yamauchi already circulates paint does not negate a reason to add a bypass. Regarding the argument on pages 10-11 (35 USC § 103 rejection of claim 4) that “is reversed for a materially different purpose: to purge ink out of the printhead nozzles (Rasmussen, column 4 lines 23-38)” the Examiner respectfully disagrees because Rasmussen discloses a recirculation mode in the reversed direction to maintain colored pigments within the ink's suspension and to prevent clogged printhead nozzles (Col. 4: Ln. 57-61). Regarding the argument on page 10 (35 USC § 103 rejection of claim 5) that “is reversed for a materially different purpose: to purge ink out of the printhead nozzles (Rasmussen, column 4 lines 23-38)” the Examiner respectfully disagrees because Rasmussen discloses a recirculation mode in the reversed direction to maintain colored pigments within the ink's suspension and to prevent clogged printhead nozzles (Col. 4: Ln. 57-61). Regarding the argument on pages 10-11 (35 USC § 103 rejection of claim 5) that “the question is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious.” the Examiner respectfully disagrees the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). 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 ANDREW DOMENIC ONDREJCAK whose telephone number is (571)270-5465. The examiner can normally be reached Mon - Fri 8:00-5:00 EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANDREW DOMENIC ONDREJCAK/Examiner, Art Unit 3752 September 4, 2026 /TUONGMINH N PHAM/Primary Examiner, Art Unit 3752
Read full office action

Prosecution Timeline

Sep 22, 2024
Application Filed
May 05, 2026
Non-Final Rejection mailed — §102, §103, §112
Jul 09, 2026
Response Filed
Sep 10, 2026
Final Rejection mailed — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
41%
Grant Probability
71%
With Interview (+29.8%)
3y 3m (~1y 2m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 22 resolved cases by this examiner. Grant probability derived from career allowance rate.

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