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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/262,582, filed on 7/24/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/16/2025, 11/18/2025 and 12/16/2025 have been considered by the examiner.
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 1-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a plurality of protective sheaths forming a protective sheath supply from which a protective sheath can be…” and subsequently recites “the protective sheath” which is unclear and renders the claims indefinite. Specifically, as a plurality of protective sheaths have been claimed, it is unclear if the recitation of “the protective sheath” is referring to the claimed “a protective sheath” or another of the claimed “plurality of protective sheaths”. Additionally, the claims recite “a dirty protective sheath” which further confuses subsequent recitations of “the protective sheath”. Additionally, claim 20 recites “the protective sheath” and “a new protective sheath” and it is unclear how these protective sheaths relate to the previously claimed plurality, and dirty protective sheaths.
Claim 1 recites “the atomizer” which lacks antecedent basis in the claims.
Claim 2 recites “the atomizer” multiple times, which lacks antecedent basis in the claims.
Claim 4 recites “the tool” which lacks antecedent basis in the claims.
Claim 5 recites “a proximal component” which is a double inclusion and renders the claims indefinite. Specifically, “a proximal component” is previously claimed, and the number of proximal components required by the claims cannot be determined.
Claim 5 recites “the axial stop” which lacks antecedent basis in the claims.
Claim 13 recites “a proximal component” which is a double inclusion and renders the claims indefinite. Specifically, “a proximal component” is previously claimed, and the number of proximal components required by the claims cannot be determined.
Claim 15 recites “the distal side” which lacks antecedent basis in the claims.
Claim 17 recites “the rotatable ring” which lacks antecedent basis in the claims.
Claim 17 recites “the immovable ring” which lacks antecedent basis in the claims.
Claim 18 recites “the rotatable ring” which lacks antecedent basis in the claims.
Claim 18 recites “the atomizer” which lacks antecedent basis in the claims.
Claim 19 recites “the rotatable ring” which lacks antecedent basis in the claims.
Claim 19 recites “the atomizer” which lacks antecedent basis in the claims.
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) 1-2, 4, 17, 19 and 20, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Coughlan et al. (USPN 4,762,455) in view of D’Andreta (US 2018/0076298 A1).
Coughlan discloses a protective covering for a robot hand axis (50) of a robot (see Fig. 1), the protective covering comprising: a proximal protective sheath fastening (250/252) for fastening a protective sheath (53) to a fastening point (See Fig. 7b) on a proximal component (216) of the robot hand axis or on a robot arm of the robot; and a distal protective sheath (230,242,246) fastening for fastening the protective sheath to a tool (52); wherein the distal protective sheath fastening includes a ring (230) fastened or integrally formed on the tool, and a rotatable ring (242) which can be rotated relative to the tool, wherein the rotatable ring rests against an axial stop (230/236 considered an axial stop, as they prevent axial movement of the distal protective sheath fastening); wherein the proximal protective sheath fastening forms an axial stop (254) which absorbs axial tensile forces from the tool and thus prevents the protective sheath from being pulled off the hand axis in the distal direction during operation; wherein the rotatable ring of the distal protective sheath fastening is rotatably attached (via 232) to the immovable ring of the distal protective sheath fastening; wherein the protective sheath is fastened (via 246) by its distal end to the rotatable ring, so that the protective sheath can rotate with the rotatable ring relative to the atomizer.
Coughlan does disclose the subcomponents of the robot arms are removable for replacement and/or maintenance, but does not specifically disclose a plurality of protective sheaths forming a protective sheath supply from which the protective sheath can be pulled over the robot hand axis to replace a dirty protective sheath, or that the tool is an atomizer.
D’Andreta discloses a plurality of protective sheaths forming a protective sheath supply (See end of Paragraph [0031], covers may be periodically removed, discarded and replaced, implying a supply) from which a protective sheath can be pulled over the robot hand axis to replace a dirty protective sheath (paragraph [0031]), for use in painting robots (which would necessarily have an “atomizer” as an end effector).
It would have been obvious to one having ordinary skill in the art at the time the application was filed to have modified the protective covering of Coughlan to have a protective sheath supply providing for replacement of dirty protective sheaths and an atomizer, in order to allow the robot to paint products without contaminating the painting environment.
With regards to claim 20, The combination of Coughlan and D’Andreta disclose an operating method for the protective covering of claim 1, comprising the following steps: loosening the proximal protective sheath fastening (Coughlan - removing 252); loosening the distal protective sheath fastening (Coughlan - removing 246); removing the protective sheath from the robot hand axis (D’Andreta - when dirty, the protective sheath is removed); pulling a new protective sheath (D’Andreta – new protective sheath is provided) from the protective sheath supply over the robot hand axis; fixing the proximal protective sheath fastening (Coughlan – Reattaching 252); and fixing the distal protective sheath fastening (Coughlan – Reattaching 246).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,350,822 in view of D’Andreta (US 2018/0076298 A1). The claims of the ‘822 patent though not identical anticipate the claims of the instant application, aside from not disclosing “a plurality of protective sheaths forming a protective sheath supply from which a protective sheath can be pulled over the robot hand axis to replace a dirty protective sheath” or an associated method of replacement. D’Andreta discloses a protective sheath supply (as the sheaths are disclosed as being replaced, a supply must therefore be provided) where a protective sheath can be pulled over the robot hand axis to replace a dirty protective sheath ([see Paragraph 0006] of D’Andreta). It would have been obvious to one having ordinary skill in the art at the time the application was filed to have modified the claimed invention of the ‘822 patent to have a protective sheath supply providing for replacement of dirty protective sheaths, in order to ensure the environment, the robot is operating in is not contaminated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE COOK whose telephone number is (571)272-5968. The examiner can normally be reached M-F 8:00-4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at (571) 270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAKE COOK
Primary Examiner
Art Unit 3618
/Jake Cook/Primary Examiner, Art Unit 3618
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