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
Applicant's election with traverse of species B, corresponding to claims 1 and 7, in the reply filed on May 25, 2026, is acknowledged. The traversal is on the ground(s) that species B and C are not patently distinct. This is found persuasive and therefore the restriction requirement is partially withdrawn such that species C, corresponding to claims 1 and 8, will be examined together with species B as a single group.
The remainder of the requirement is still deemed proper and is therefore made FINAL.
Claims 2-6 and 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/266,188 (reference application).
Claim 1 is unpatentable over claim 1 of the reference application. Although the claims at issue are not identical, they are not patentably distinct from each other, as detailed below:
A robot apparatus (ref: “system:) comprising:
a robot arm mechanism (ref: “manipulator”) mounted on a base (ref: “free cart”); and
a controller (ref: “control device”) to control the robot arm mechanism to execute a predetermined task, wherein the controller controls the robot arm mechanism to move the base (ref: “the control device… controls the manipulator… to move the robot”).
Claim 8 is unpatentable over claim 8 of the reference application. Although the claims at issue are not identical, they are not patentably distinct from each other, as detailed below:
The robot apparatus according to claim 1, wherein
the base is provided movably along a rail (ref: “guide mechanism”), and
the controller controls the robot arm mechanism to push a structure (ref: “fixed object” of claim 1) provided near the rail with a hand of the robot arm mechanism and move the base away from the structure (ref: “the control device operates the manipulator with the hand grasping a fixed object… to move the robot toward or away from the fixed object” of claim 1).
This is a provisional nonstatutory double patenting rejection because, although a notice of allowance for the reference application has been sent, the patent for the patentably indistinct claims has not yet been issued.
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.
Claims 1 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KONNO (JP-H08174449-A).
Regarding Claim 1, KONNO teaches a robot apparatus (Fig. 1) comprising:
a robot arm mechanism (Manipulator 3, Fig. 1) mounted on a base (Trolley 2, Fig. 1); and
a controller (Control Device, Para. [0024]; hereafter: “CD”) to control the robot arm mechanism (3) to execute a predetermined task, wherein the controller (CD) controls the robot arm mechanism (3) to move the base (2) (Para. [0024] teaches that Control Device CD provides a signal to Servo Motor 2b of Manipulator 3 to cause Table 2a of Trolley 2 and Manipulator 3 to move along Guide Rail 1).
Regarding Claim 7, KONNO further teaches that the base (2) is provided movably along a rail (Guide Rail 1, Fig. 1), and
the controller (CD) controls the robot arm mechanism (3) to rotate a pinion gear (Pinion 2c, Fig. 1) meshed with a rack (Rack 1d, Fig. 1) arranged along the rail (1) (Para. [0024] teaches that Control Device CD provides a signal to Servo Motor 2b of Manipulator 3, which rotates Pinion 2c that is meshed with Rack 1d, to cause Table 2a of Trolley 2 and Manipulator 3 to move along Guide Rail 1).
Regarding Claim 8, KONNO further teaches that the base (2) is provided movably along a rail (Guide Rail 1, Fig. 1), and
the controller (CD) controls the robot arm mechanism (3) to push a structure (Leg Column 1a, Fig. 1) provided near the rail (1) with a hand (Hand 3c, Fig. 1) of the robot arm mechanism (3) and move the base (2) away from the structure (1a) (Para. [0025] teaches that Control Device CD operates Hand 3c, and it is understood from at least Fig.1 and Paras. [0022]- [0025] that Control Device CD would be capable of controlling Hand 3c of Manipulator 3 to push against Column 1a in order to move Trolley 2 and Manipulator 3 away from Column 1a).
Further, the examiner notes that the clause “the controller controls the robot arm mechanism to push a structure provided near the rail with a hand of the robot arm mechanism and move the base away from the structure” is considered to be intended use as it is a recitation with respect to the manner in which the claimed apparatus is intended to be employed and – although fully considered – is not understood to affect the scope of the claim because recitations of intended use of the claimed invention do not result in a structural difference between the claimed invention and the prior art. See MPEP 2114. In this case the robot apparatus of KONNO teaches all of the claimed structural limitations as discussed above and, because the hand (Hand 3c) of KONNO would be capable of reaching the structure (Column 1a) in order to push against it, it is understood to be structurally capable of the claimed use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYLER JAY STANLEY whose telephone number is (571)272-3329. The examiner can normally be reached Monday- Friday 8:30-5:30 ET.
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, Valentin Neacsu, Ph.D. can be reached at (571)272-6265. 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.
/TYLER JAY STANLEY/Examiner, Art Unit 3611
/ANNE MARIE M BOEHLER/Primary Examiner, Art Unit 3611
Prosecution Insights