DETAILED CORRESPONDENCE
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 without traverse of Species A - Fig. 33-37, 46-47 and 50-51 in the reply filed on 04/28/2026 is acknowledged.
Applicant asserts that claims 1-7 and 10-19 read on elected species A. However, claim 12 requires “a plurality of screw tangs extending from the screw”, which is a feature only shown in Fig. 84 and 85, i.e., Species C. Therefore, claim 12 is withdrawn from further consideration.
Status of Claims
This Office Action is in response to the application filed on 03/27/2025. Claims 1-19 are presently pending and are presented for examination.
Claims 8-9 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/28/2026.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [00113] reads “distal tip 102”, --distal end 102-- is suggested.
Appropriate correction is required.
Claim Objections
Claims 5, 15 and 19 are objected to because of the following informalities:
Claim 5 line 2 reads “the other”, --another-- is suggested.
Claim 15 line 1 reads “adjusted”, --adjuster-- is suggested.
Claim 19 line 2 reads “the other”, --another-- is suggested.
Appropriate correction is required.
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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a drive assembly in claim 10; a ball adjuster in claim 14, and a distance measuring system in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 2, 4, 13 and 19 are 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 pre-AIA the applicant regards as the invention.
Claim 2 lines 1-2 recite the limitation “the common conduit comprises a flexible conduit”. First, it is unclear if the common conduit and a flexible conduit are both required, or if the common conduit is a flexible conduit. Second, claim 1 recites the limitation “each of the first longitudinal passage and the second longitudinal passage are configured to allow a common conduit to extend therethrough”. It is unclear if the first and second longitudinal passages are configured to allow a common conduit that is flexible, or if the flexible conduit is required by the claims.
Claim 4 line 2 recites the limitation “an electrical outlet sized hole”. It is unclear what is required to be an electrical outlet sized hole.
Claim 13 lines 3-4 recite the limitations “the objects” and “the enclosed space”. There is insufficient antecedent basis for these limitations in the claim.
Claim 19 lines 6-8 recite the limitation “an output operably connected to the motor, distal from the drill head, wherein the output extends through he first longitudinal passage and the second longitudinal passage”. However, claim 1 recites the limitation “each of the first longitudinal passage and the second longitudinal passage are configured to allow a common conduit to extend therethrough”. It is unclear if the output and the conduit are both required to extend through the first and second longitudinal passages.
Claim Rejections - 35 USC § 102
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) 1-3, 5, 7, 10-11, 13 and 19 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Bilsky (US 20190070726 A1).
Regarding claim 1, Bilsky discloses a robot (see Fig. 1A; 100) comprising: a first link (102) having a first longitudinal passage extending therethrough (see Fig. 2); and a second link (102) having a second longitudinal passage extending therethrough (see Fig. 2), wherein the second link is releasably engageable with the first link (via 122), wherein the first longitudinal passage is in communication with the second longitudinal passage and wherein each of the first longitudinal passage and the second longitudinal passage are configured to allow a common conduit to extend therethrough (see paragraph [0080], wherein “An axial through-passage 126 extends through the length of curvic pin 122 and allows for the passage of material, such as, for example, flexible driveshaft 505 for a drill 504 (shown in FIG. 15), as well as any other material, such as, for example, tubing for the transmission of fluids (e.g. gases, liquids, viscous material, etc.), electrical cabling, and other elongated material through the length of link 102”).
Regarding claim 2, Bilsky discloses the common conduit comprises a flexible conduit (see paragraph [0080], wherein “An axial through-passage 126 extends through the length of curvic pin 122 and allows for the passage of material, such as, for example, flexible driveshaft 505 for a drill 504 (shown in FIG. 15), as well as any other material, such as, for example, tubing for the transmission of fluids (e.g. gases, liquids, viscous material, etc.), electrical cabling, and other elongated material through the length of link 102”).
Regarding claim 3, Bilsky discloses the robot (100) is configured for movement through an enclosed space (see Fig. 1).
Regarding claim 5, Bilsky discloses a mapping device connected to one of the first link and the second link, distal from the other of the first link and the second link, wherein the mapping device is configured to use a scanning system to determine the location of objects inside the enclosed space (see paragraph [0140], wherein the proximal end of robot 100 can also include a video camera).
Regarding claim 7, Bilsky discloses a reel (see Fig. 26; 700) holding the first link and the second link, wherein the reel is configured to feed out the first link and the second link (see paragraph [0141], wherein robot 100 can be at least partially unwound from spool 700).
Regarding claim 10, Bilsky discloses the first link (102) comprises: an outer sleeve (see Fig. 3; 108) having a plurality of longitudinal slots (115) formed therein; and a drive assembly (see Fig. 2A) including: an endcap (172) having a plurality of tangs (see Fig. 7A; 182), each of the plurality of tangs engaging one of the plurality of slots (see paragraph [0087, wherein “Tabs 182 slidably engage in longitudinal slots 115 in outer housing 108”); a bushing (see Fig. 2A; upper portion of 172) attached to the endcap and defining the first longitudinal passage (see Fig. 2A); and an external circumferential groove formed in the bushing (see Fig. 2A; groove wherein 168 is provided).
Regarding claim 11, Bilsky discloses the tangs (182) prevent the end cap (172) from rotating relative to the outer sleeve (108).
Regarding claim 13, Bilsky discloses a distance measuring system attached to one of the first link or the second link, the distance measuring system configured to locate the objects in two and three dimensions within the enclosed space (see paragraph [0140], wherein the proximal end of robot 100 can also include a video camera).
Regarding claim 19, Bilsky discloses a third link (see Fig. 1A; link between 105 and 102) connected to one of the first link and the second link (102), distal from the other of the first link and the second link, wherein the third link includes: a drill head (105); a motor connected to the drill head (via 520); and an output (520) operably connected to the motor, distal from the drill head, wherein the output extends through the first longitudinal passage and the second longitudinal passage (see Fig. 16).
Claim(s) 1-7, 10-11 and 13-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matt Bilsky.
According to MPEP 706(I), “ The standard to be applied in all cases is the “preponderance of the evidence” test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable.” In this instance, the author of the YouTube video and the inventor of the instant application are the same. As such, it is more likely than not that the device in the prior art is the same or substantially the same as the device of the instant application, and all the limitations of the claims are expressly or inherently disclosed in the prior art. Therefore, it is more likely than not that the claims are unpatentable. Additionally, MPEP 2112(V) states “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning to show inherency, the burden of production shifts to the Applicant”. Therefore, “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
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 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bilsky (US 20190070726 A1).
Regarding claim 4, Bilsky fails to disclose the robot is sized for insertion through an electrical outlet sized hole. However, it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984). In this instance, the robot of Bilsky can be scaled up/down for insertion through an electrical outlet sized hole and not perform any differently, and is therefore considered an obvious matter of design choice.
Regarding claim 6, Bilsky fails to disclose a maximum length of the first link is 6.19 inches. However, it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984). In this instance, the robot of Bilsky can be scaled up/down such that the maximum length of the first link is 6.19 inches and not perform any differently, and is therefore considered an obvious matter of design choice.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
US 20100030377 A1, US 20170266806 A1, US 20160311108 A1, US 20140371764 A1 and US 8496416 B1 disclose snake robots with first and second links having longitudinal passages.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH BROWN whose telephone number is (313)446-6568. The examiner can normally be reached Mon-Thurs: 8:00am - 5:00pm 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, Minnah Seoh can be reached at 571-357-2384. 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.
/JOSEPH BROWN/Primary Examiner, Art Unit 3618
Prosecution Insights