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 .
Pursuant to communications filed on 11/11/2024, this is a First Action Non-Final Rejection on the Merits wherein claims 62-84 are currently pending in the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/06/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 62-84 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of parent Patent US 11,897,127 to Dimaio. Although the conflicting claims at issue are not identical, at least independent claims 62, 73 and 80 have been amended and/or have been re-arranged in wording. After a thoroughly review, Examiner believes they are directed to the same scope of invention, as such, they are not patentably distinct from each other because the claimed system (claims 62-72), method (claims 73-79) and system (claims 80-84) with the associated components and steps recited are obvious over the system (claims 1-26), method (claims 27-33) and CRM (claim 34) recited in the allowed claims 1-34 of parent Patent US 11,897,127.
In other words, the claims are not patentably distinct from each other because the Examiner takes note that the narrower claimed combination of claims 1-34 of parent Patent US 11,897,127 encompass the broader claimed combination of claims 62-84 of the instant application '595.
For example, based on the provided claim language:
At least system claim 62 is obvious over parent system claim 1.
At least method claim 73 is obvious over parent method claim 27.
At least system claim 80 is obvious over the combination of parent system claims 1, 10 and 11.
Applicant provides similar, if not identical limitations as in claims 1-34 of the above-mentioned U.S. Patent, specifically wherein both inventions include a robotic system comprising a plurality of robotic manipulators; a control system comprising processing circuitry, the control system communicatively coupled to the plurality of robotic manipulators, and further makes a determination that the first image-space tool corresponds to the first tool.
Since claims 63-72, 74-79, and 81-84 are dependent upon a rejected base claims 62, 73 and 80, these claims are being allowed in virtue of their dependency of allowed claims 62, 73 and 80 after a filing of a Terminal Disclaimer.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not teach or suggest the combination of limitations, especially those which include the specific limitations regarding claims 62, 73 and 80. As such, it is hereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art. Thus, the prior art references do not disclose the recited claim limitations when considered as a whole.
The filing of a terminal disclaimer would overcome the nonstatutory double patenting rejection or applicant may amend the claims to overcome the double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jaime Figueroa whose telephone number is (571)270-7620. The examiner can normally be reached on Monday-Friday 9-5.
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, Wade Miles can be reached on 571-270-7777. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAIME FIGUEROA/Primary Patent Examiner, Art Unit 3656
Prosecution Insights