DETAILED ACTION
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 09 September 2025, this is a First Action Non-Final Rejection on the Merits. Claims 1-20 are currently pending in the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09 September 2025 and 10 February 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) have been 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 § 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. 12,420,437 B2. 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 robot comprising:
a first finger comprising:
a first contact part;
a first light emitter configured to radiate light toward the first contact part;
a first camera configured to capture an image in a direction corresponding to a location of the first contact part; and
a first polarization filter between the first light emitter and the first contact part;
a second finger comprising:
a second contact part;
a second light emitter configured to radiate light toward the second contact part;
a second camera configured to capture an image in a direction corresponding to a location of the second contact part; and
a second polarization filter interposed between the second light emitter and the second contact part;
a driver configured to cause the first finger and the second finger to move;
memory storing at least one instruction; and
at least one processor configured to execute the at least one instruction,
wherein the at least one instruction, when executed by the at least one processor individually or collectively, causes the robot to:
obtain a first image through the first camera and a second image through the second camera by controlling an activation state of at least one of the first light emitter, the second light emitter, the first polarization filter, and the second polarization filter, and
based on identifying a presence of an object positioned between the first contact part and the second contact part based on the first image and the second image, control the driver to cause the first finger and the second finger to grip the object based on difference between a first distance and a second distance,
wherein the first distance corresponds to a distance between the first contact part and the object, the first distance being obtained based on the first image, and
wherein the second distance corresponds to a distance between the second contact part and the object, the second distance being obtained based on the second image.
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 2-9, Applicant provides similar limitations as provided throughout claims 1-8 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.
Regarding claim 10, Applicant provides similar limitations as in claim 9 of the issued U.S. Patent, wherein both of the respective claim(s) include (similar limitations provided in bold):
A method of controlling a robot comprising a first finger and a second finger, the method comprising:
obtaining a first image through a first camera of the first finger and a second image through a second camera of the second finger by controlling an activation state of at least one of a first light emitter of the first finger, a first polarization filter of the first finger, a second light emitter of the second finger, and a second polarization filter of the second finger; and
based on identifying a presence of an object positioned between a first contact part of the first finger and a second contact part of the second finger based on the first image and the second image, causing the first finger and the second finger to move toward a location at which the object is positioned based on difference between a first distance and a second distance,
wherein the first distance corresponds to a distance between the first contact part and the object, the first distance being obtained based on the first image, and
wherein the second distance corresponds to a distance between the second contact part and the object, the second distance being obtained based on the second image.
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 11-15, Applicant provides similar limitations as provided throughout claims 9-14 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.
Regarding claim 16, Applicant provides similar limitations as in claim 15 of the issued U.S. Patent, wherein both of the respective claim(s) include (similar limitations provided in bold):
A non-transitory computer readable medium having instructions stored therein, which when executed by at least one processor individually or collectively cause the at least one processor to individually or collectively execute a method of controlling a robot comprising a first finger and a second finger, the method comprising:
obtaining a first image through a first camera of the first finger and a second image through a second camera of the second finger by controlling an activation state of at least one of a first light emitter of the first finger, a first polarization filter of the first finger, a second light emitter of the second finger, and a second polarization filter of the second finger; and
based on identifying a presence of an object positioned between a first contact part of the first finger and a second contact part of the second finger based on the first image and the second image, causing the first finger and the second finger to move toward a location at which the object is positioned based on difference between a first distance and a second distance,
wherein the first distance corresponds to a distance between the first contact part and the object, the first distance being obtained based on the first image, and
wherein the second distance corresponds to a distance between the second contact part and the object, the second distance being obtained based on the second image.
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 17-20, Applicant provides similar limitations as provided throughout claims 15-20 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 notes wherein the nonstatutory 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 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).
Allowable Subject Matter
Claims 1-20 appear to contain allowable subject matter in view of the prior art, however the above Double Patenting Rejection(s) would need to be overcome in order to place the application in condition for allowance. Examiner additionally notes wherein pending any potential formal amendments to the claims, the amended claims would need to be reevaluated in view of the prior art in order to determine final allowability of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892 – Notice of References Cited form. Examiner additionally notes the following references, in the same field of endeavor as the instant invention;
US 2021/0394367 A1, issued to Correll et al, which teaches a three-dimensional perception and object manipulation robot gripper for identifying and manipulating one or more objects.
US 2020/0391378 A1, issued to Bingham et al, which a method for controlling a robotic gripping device to cause a plurality of digits of the robotic gripping device to move towards each other to attempt to grasp and object with the assistance of a non-contact sensor provided on the robotic gripping device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN L SAMPLE whose telephone number is (571)270-5925. The examiner can normally be reached Monday-Friday 7:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Mott can be reached at (571)270-5376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN L SAMPLE/Primary Examiner, Art Unit 3657
