Notice of 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 .
DETAILED ACTION
Examiner Comment
Acknowledgement of Applicant’s Response
The merits of the application have been carefully considered in view of Applicant’s response filed 09/25/2025. Applicant’s amendment has not fully overcome the rejection under 35 USC § 112(a) and (b), which is set forth again and made final.
Furthermore, the applicant Declaration under 37 CFR 1.130(a) as a means to overcome the rejection has been considered but fails to sufficiently establish the prior art disclosure as being an inventor-originated disclosure. Therefore, the rejection under 35 U.S.C. § 102(a)(1), is set forth again and made final.
In Applicant’s 09/25/2025 Declaration under 37 CFR §1.130(a), the Inventor states at number 3:
“The disclosure of “Cleaning robot” was made by us.”
The statements do not satisfy the requirements for a 37 CFR §1.130(a) Declaration. In order to invoke a 102(b)(1)(A) exception, Applicant must follow the instructions in MPEP § 706.02(b)(1) for overcoming a rejection under 35 U.S.C. 102(a)(1).
To be effective at overcoming the 35 USC 102(a)(1) rejection, this declaration must include:
1) an unequivocal statement that the inventor of the claimed design is also the inventor of the subject matter applied in the rejection, and
2) states how (i.e. the chain of events and circumstances) the publisher (the one making the disclosure) of the prior art obtained the design either directly or indirectly from the inventor.
The 09/25/2025 Declaration satisfies that the inventors of the claimed design are also the inventors of the subject matter applied in the rejection; however, it does not address the publisher of the subject matter nor whether the subject matter was obtained either directly or indirectly. It is not evident how a disclosure would be obtained both directly and indirectly.
Note: In §717.01 the statement “disclosure was made” means that the inventor published the disclosure, i.e. responsible for the disclosure of the subject matter (not to be confused with responsible for the subject matter, i.e. the design, itself). In order to establish that “the subject matter disclosed was obtained directly or indirectly…”, an affidavit should state 1) that the subject matter in the reference is the design of the inventor, and 2) provide some explanation of how the design came to be published by another, or 3) provide a copy of the printed publication.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Drawing Objection
The drawings/reproductions are objected to because the order is not in ascending order (1.2, 1.4, 1.5, 1.1, 1.3, 1.6, 1.7). Pursuant to Hague Rule 9 Administrative Instructions Section 405(b), the reproductions shall be submitted in ascending numerical order. Correction is required to arrange the drawings in ascending order beginning with 1.1.
See “Avoidance of New Matter and Replacement Drawings” below.
FINAL CLAIM REJECTION - 35 USC § 112(a) and (b)
The claim is FINALLY rejected under 35 U.S.C. 112(a) and (b), first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claim is indefinite and nonenabling because the visual disclosure of the claimed design as originally filed is of such poor quality that its overall shape and appearance cannot be understood (MPEP § 1504.04). Specifically, the overall line quality is very poor. The lines are (1) fuzzy and blurry with smudges. (2) The line weight is inconsistent. Some are too light while others are thick and dark. Some lines transition from light to dark. It makes the details of the design indiscernible. This creates confusion and makes it impossible to reconcile the details among the views, interfere with the understanding of the claim scope and make it impossible to understand the exact shape and appearance of the claimed design. See attached annotated drawings.
To overcome this rejection, the applicant may submit arguments to explain the nonenabled features or may submit new drawings of the claimed design that show the design clearly and consistently with line quality that meets the standards. The reproductions must be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication. See Rule 9(2) and 37 C.F.R. 1.1026 Reproductions.
Avoidance of New Matter
Applicant is advised that all of the preceding issues must be addressed, without the introduction of anything that was not shown in the original disclosure (i.e., new matter), either by the addition or removal of features of the claimed design. In any attempt to prepare new drawings in an effort to overcome the rejection, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121.
Replacement Drawings
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as amended. If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as "Annotated Sheet") including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
FINAL CLAIM REJECTION – 35 U.S.C. 102(a)(1)
The claim as rejected above is indefinite because the art to which it pertains is not clear. However, inasmuch as the claimed design may be understood, the ornamental appearance of the claim is sufficient for comparison with the prior art. Accordingly, the claim is also rejected under 35 U.S.C. §102, as follows. See MPEP 2143.03(I).
The claim is FINALLY rejected under 35 U.S.C. 102(a)(1) as being anticipated by non-patent document Strategic Partnership! Syrius Technology Collaborates with SoftBank Robotics and IRIS OHYAMA to Launch New Commercial Cleaning Robot (“Syrius”) at https://www.prnewswire.com/apac/news-releases/strategic-partnership-syrius-technology-collaborates-with-softbank-robotics-and-iris-ohyama-to-launch-new-commercial-cleaning-robot-301981161.html (Non-patent Document U on 03/25/2025 Examiner’s Notice of References Cited, page 1) because 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 (EFD) of the claimed invention.
The appearance of non-patent document Syrius is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
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Claimed design
EFD: 03/11/2024
Syrius
Published date: 11/08/2023
“Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)).
“The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,’ so too minor differences cannot prevent a finding of anticipation.” Int'l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
A 102(a)(1) rejection where the date of the reference is equal to or less than one year may be overcome by:
1. Applicant providing persuasive arguments that clearly show and describe the claimed design as patentably distinguishable from the prior art mentioned. In other words, the raised rejection can be overcome by evidence that the product in the prior art reference does not necessarily or inherently possess an integral characteristic of the applicant's claimed design; and/or
2. Invoking either the 102(b)(1)(A) or 102(b)(1)(B) exceptions. See MPEP 2152.06 (D) and MPEP § 717.01
Note: In evaluating an affidavit, the examiner need only determine if sufficient evidence has been provided to establish that the subject matter disclosed was obtained from the inventor or a joint inventor. In §717.01(a)(1) and (B)(1) the “disclosure was made” means that the inventor published the disclosure, i.e. responsible for the disclosure of the subject matter (not to be confused with responsible for the subject matter, i.e. the design, itself). In order to establish that “the subject matter disclosed was obtained directly or indirectly…”, an affidavit should state:
that the subject matter in the reference is the design of the inventor, and
provide some explanation of how the design came to be published by another.
A response is required in reply to the Office action to avoid abandonment of the application.
Hague Reply Reminder
Applicant is reminded that any reply to this communication must be signed either by a patent
practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion of the Merits of the Application
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant’s representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or in person interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, available at
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
Responding to Official USPTO Correspondence
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR
1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only)
https://www.uspto.gov/patents/apply
Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents/maintain/responding-office-actions
Conclusion
In summary, the claim is FINALLY REJECTED for the reasons set forth above.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNYLOU M BINAS whose telephone number is (571)272-8778. The examiner can normally be reached on Monday to Friday from 10:00 AM to 6:00 PM (ET).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, AMBER R. STILES, can be reached at telephone number (571)272-7611. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Interviews
Examiner interviews are available via telephone and video conferencing using a USPTO supplied we-based collaboration too. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/patents/laws/interview-practice. Examiner requires an interview agenda to be submitted one week prior to the interview.
Information regarding the Status of an Application
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.
Inventors Assistance Center
The Inventors Assistance Center (IAC) provides patent information and services to the public. The IAC is staffed by former Supervisory Patent Examiners and experienced Primary Examiners who answer general questions concerning patent examining policy and procedure. Applicants should contact the IAC concerning payment of FEES, schedule of PRINTING of Patents, RECEIPTS, and any other administrative issues. IAC is available M-F 8:30 AM - 8:00 PM (ET) except federal holidays at 800-PTO-9199 (800-786-9199) or 571-272-1000 and for TTY/TDD 800-877-8339 for customer assistance. For more information about the IAC, see https://www.uspto.gov/learning-and-resources/support-centers/inventors-assistance-center-iac.
/JENNYLOU M BINAS/Examiner, Art Unit 2913