DETAILED ACTION
Status of Claims
Claims 1-17 are currently pending and have been examined in this application. This Non-final communication is the first action on the merits.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/10/2026 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 12,403,598. Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope to the allowed claims and would be fully encompassed and/or anticipated by the issued U.S. Patent.
Specifically wherein;
Regarding claim 1, Applicant provides similar limitations as in claim 1 of the issued U.S. Patent, wherein both of the respective claim(s) include (similar limitations provided in bold):
A system comprising: a robot; and a controller configured to control the robot, wherein the controller is configured to switch the robot from a first state to a second state in which orientation change in accordance with external force applied to the robot is more tolerated than in the first state based on detection of contact of an object with the robot, and wherein the controller is configured to switch the robot to a third state in which an amount of movement of the robot in response to the external force is smaller than in the second state, after the orientation change in accordance with the external force is started and while the external force is being applied to the robot.
Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that the adding or deleting of an element and its function(s) in the claim of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Regarding claims 2-15 Applicant provides similar limitations as provided in at least claims 2-6, 8-12, 14, 27, and 32-34 of the issued U.S. Patent. Although conflicting claims are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitation(s)/step(s) or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that the adding or deleting of an element and its function(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader), they are commensurate in scope to the claim limitations provided in the issued U.S. Patent, and likewise would anticipate the currently provided claim limitations.
Examiner further notes wherein the non-statutory double patenting rejection(s) provided herein would be overcome with 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 non-statutory 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).
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.
Claim 16 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Inazumi (US 20130184868 A1)
Claim 16:
Inazumi teaches the following limitations:
A system comprising: a robot, wherein the robot changes an orientation in accordance with external force applied to the robot after contact of an object with the robot that is changing the orientation is detected, and (Inazumi - [0156] Accordingly, for confirmation of the amount of displacement change, for example, the first external force, the second external force, the third external force having different magnitudes from each other are applied to the manipulator, and the displacement of the manipulator when the first external force is applied, the displacement when the second external force is applied, and the displacement when the third external force is applied are respectively obtained. …) wherein the robot is switched to a state in which an amount of movement of the robot in response to the external force is smaller than a displacement of the change in the orientation in accordance with the external force, after the change in the orientation in accordance with the external force is started and while the external force is being applied to the robot. (Inazumi - [0160] Thereby, for example, the force control by which the larger the absolute value of the virtual displacement (or external force), the smaller the amount of displacement change or the like can be performed. That is, the force control as shown in FIG. 12B can be performed. Specifically, the manipulator is easy to be pressed in as long as the force applied to the manipulator of the robot is small to some extent and the manipulator moves in response to the applied force, however, when the force applied to the manipulator is larger, the manipulator becomes hard to be pressed in as if the manipulator acted repulsively. Therefore, even when the external force suddenly disappears, the movement of the manipulator may be limited within the predetermined range by performing the control of limiting the displacement if the external force is larger as shown in FIG. 12B.)
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 17 is rejected under 35 U.S.C. 103 as being unpatentable over Inazumi (US 20130184868 A1) as modified by Kamiya (US 20190145798 A1)
Claim 17:
Inazumi does not explicitly teach the following limitations, however Kamiya teaches:
The system according to Claim 16 wherein, after the contact of an obstacle with the robot has been detected, the robot being under the change in the orientation stops the orientation change. (Kamiya– [0072] …. the contact recognition unit 56 determines that contact of the object to the robot main body 1 is present. In that case, the control device 5 causes the robot movable unit 10 to perform the avoidance operation or the stop operation on the object. [0076] … in a case where contact of the object is detected by the force detection system 40, the operation of the robot movable unit 10 is stopped. With this configuration, it is possible to further reduce danger at the time of a collision while further reducing the decrease in the work efficiency of the robot 100.)
Therefore, prior to the effective filing date of the claimed invention, it would have been
obvious to one of ordinary skill in the art to modify Inazumi to include a method of sensing obstacles and stopping the robot prior to or just after contact as taught in Kamiya. Having the ability to sense obstacles and stop the robot upon contact would increase the safety of the human operator and minimize damage to the robot arm during the teaching operation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure or directed to the state of the art is listed on the enclosed PTO-892.
The following is a brief description for relevant prior art that was cited but not applied:
Yoshimi (US 20200298396 A1) describes a six-axis vertical industrial robot arm that is intended for cooperation with a human operator/teacher. The robot orientation is taught by direct external force and contact of the human with the robot’s joints.
Corkum (US 20170066130 A1) describes a jointed, industrial robot arm that is intended for cooperation with a human operator/teacher. The robot orientation is taught by the capacitance contact of the human with the robot’s surface. The robot further has proximity detection sensors which can judge the distance of the robot arm form obstacles and then appropriately adjust the speed or stop the robot.
Takeuchi (US 20210107135 A1) describes a cooperative, direct teaching robot arm which can be guided and taught by applying external force to the body of the robot. The robot can also identify singular positions and determine an escape path for the arm to avoid undesirable positioning.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN LINDSAY OSTROW whose telephone number is (703)756-1854. The examiner can normally be reached M-F 8 - 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, Adam Mott can be reached on (571) 270 5376. 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.
/ALAN LINDSAY OSTROW/Examiner, Art Unit 3657
/JONATHAN L SAMPLE/Primary Examiner, Art Unit 3657
Prosecution Insights