REPLY TO FIRST EXAMINATION REPORT

September 13, 2017

To,
The Controller of Patents,
The Patent Office,
Mumbai. by online filing only

Kind Attn.: Mr. Santanu Dey, Controller of Patents

Re: Indian Patent Application No. 2009/MUMNP/2009 dated October 27, 2009
Applicant: KOHLER CO.
Title: "AUTOMATED SEAT AND/OR LID ASSEMBLY FOR A TOILET"
Our Ref. No.: P3036IN00

Dear Sir,

This is further to the First Examination Report (FER) issued on March 15, 2017 in
respect of the above-mentioned patent application. The Applicant hereby submits
response to all the objections. The last date to put the application in order for grant
is September 15, 2017. The Patent Office is requested to take the following on
record:

Summary of Claim Amendments

The present patent application is based on the PCT application no.

PCT/US2008/004607 which has 1-41 claims. At the time of filing of the present
patent application, the claims were amended under Article 28 of PCT by filing the
Form 13 dated October 27, 2009. We request the Learned Examiner to not to
take the abovementioned Form 13 on record. Accordingly, we are submitting,
herewith, the claim amendments made according to the claims 1-41 of the
abovementioned PCT application no. PCT/US2008/004607 filed at the
International Bureau. We request the Learned Examiner to take the presently
amended claims which are based on the original PCT claims 1-41 on record. The
summary of the claim amendments is as follows:

Krishna & Saurastri Associates, 74-F, Venus, Worli Sea Face, Mumbai – 400 018, India.
Phone: 91 (22) 2200 6320 | Fax: 91 (22) 2200 6326
Email: info@krishnaandsaurastri.com Website: www.krishnaandsaurastri.com
The original independent claim 1 is amended to bring out the inventive step more
clearly. The original claims 2-4 are cancelled. Support for the amendments made to
the original claim 5 (now amended claim 2) can be found in the original claim 37.
Support for the amended claims 3-6 can be found in the original claims 38-41
respectively. The original claims 7-9 are deleted. The original claim 10 is amended
to replace the terms “first position” and “second position” by the terms “open
position” and “closed position” respectively. The original claims 11 and 12 are
cancelled. The original claim 13 (now amended claim 11) is amended to bring out
the inventive step more clearly. The original claims 22-29 are deleted. The original
claims 30-32 (now amended claims 20-22) are amended. The original claims 33-41
are cancelled.

Response to objections

Our response to the objections that are raised in the present FER, is provided as
follows:

Part II-B (ii) Inventive Step

The Learned Examiner has objected that the subject matter of the present invention
lacks inventive step in view of the following cited documents:

D1: US 6643852; D2: WO 2004100745; D3: DE 4417827; and D4: DE 10311132.

In view of the above objection, the Applicant has amended the independent claim
1 to bring out inventive step more clearly. The amended independent claim 1
recites:

“An automated attachment assembly for a toilet (20),

comprising:
a bowl attachment being pivotable about a hinge axis
(22) between an open position and a closed position;

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 a capacitive sensor coupled to an upper surface of the
bowl attachment in a distal location relative to the hinge
axis (22) for sensing the presence of an object adjacent
to the bowl attachment, and positioned to be touched by
a user and not obscured by other structures of the toilet
(20) when the bowl attachment is in the closed position;
an actuator activated by the capacitive sensor to
pivot the bowl attachment from the closed position to the
open position when a user touches the capacitive sensor;
and
a lead coupled to the capacitive sensor and the bowl
attachment, such that the lead moves with the bowl
attachment as the bowl attachment is pivoted.”
The claim 1 has been amended to recite “a capacitive sensor coupled to an upper
surface of the bowl attachment in a distal location relative to the hinge axis
(22) for sensing the presence of an object adjacent to the bowl attachment, and
positioned to be touched by a user and not obscured by other structures of the
toilet (20) when the bowl attachment is in the closed position” None of the cited
documents D1-D4 disclose, teach, or suggest such elements.

The Learned Examiner has objected that the detector 3 in D1 is similar to the sensor
recited in the claim 1. D1 discloses that “the detector 3 mounted in the rear detects
the leaving human body (i.e., the hips) when the seat 10 is dropped flat for use.”
(Referring to Lines 19-21 of Column 2 of D1, with emphasis added). As illustrated
below, the detector 3 in D1 is positioned at the rotational axis of the seat 10, which
is at the rear of the seat 10, rather than at a distal portion of the seat (e.g., opposite
from the rear end of the seat). Further, when the seat 10 and the cover 30 are in a
closed position, the detector 3 is obscured by the cover 30 and is not accessible to
be touched by a user.

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In contrast, the amended claim 1 recites “a capacitive sensor coupled to an upper
surface of the bowl attachment in a distal location relative to the hinge axis (22) for
sensing the presence of an object adjacent to the bowl attachment, and positioned
to be touched by a user and not obscured by other structures of the toilet (20) when
the bowl attachment is in the closed position”. As described in the present
application, “[m]ounting the switch assemblies 28 [e.g., capacitive sensors] to the
front of the lid 16, near the distal end of the bowl attachment, provides convenient,
sanitary access to the switch assemblies 28.” (Referring to Lines 8-10 on Page 7 of
the Complete Specification attached herewith).

D1 fails to disclose any such sensor disposed at a distal location from a hinge axis,
much less the sensor not being obscured when the bowl attachment is in the closed
position.

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Further, D2 fails to disclose any sensors on the seat 101, much less at a distal
location from the hinge axis. D3 and D4 are directed to sensors in vehicle seats and
therefore do not disclose either a hinge axis or a sensor at a distal location.

For at least the above reasons, the Applicant submits that the amended claim 1 is
inventive over D1. D2-D4 fail to remedy the deficiencies of D1. The claims 2-10
depend from the amended claim 1 and are therefore patentable over D1-D4 for at
least the same reasons as the amended claim 1, even without regard to the additional
patentable elements recited therein.

Further, the amended claim 11, recites, among other elements, “at least one touch
sensor mounted to the lid (16) in a distal location relative to a hinge axis (22) about
which the lid (16) rotates, the touch sensor being positioned to be touched by a user
and not obscured by other structures of the toilet (20) when the lid (16) is in the
lowered position” (emphasis added). Specifically, the subject matter in the amended
claim 11 incorporates the elements discussed above with respect to amended
independent claim 1.

Accordingly, the amended claim 11 is inventive over D1-D4 for at least the same
reasons as the amended claim 1, even without regard to the additional patentable
elements recited therein. The amended claims 12-22 depend from the amended
claim 11 and are therefore patentable over D1-D4 for at least the same reasons as
the amended claim 11, even without regard to the additional patentable elements
recited therein.

In view of the above, the Applicant submits that the amended claims 1-22 are
inventive over the cited documents D1-D4, both, individually and in combination.
Therefore, the Applicant respectfully requests the Learned Examiner to waive the
above objection.

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 Part II-B (xi) Abstract
In view of the aforementioned objection, the abstract is amended to include the
amended title of the invention and the reference figure. The marked copy and the
clean copy of the amended abstract page is attached herewith for the ready reference
of the Learned Examiner. Therefore, the Applicant respectfully requests the
Learned Examiner to waive the above objection.

Part II-B (xii) Title of Invention

In view of the aforementioned objection, the title of the invention is amended to
delete the term “and/or”. The amended title reads as follows: “AUTOMATED
SEAT AND LID ASSEMBLY FOR A TOILET”. Fresh Form 1 and Fresh Form 2
(Title page only) bearing the amended title are attached herewith. Similar
amendments have been carried out on Abstract Page. Therefore, the Applicant
respectfully requests the Learned Examiner to waive the above objection.

Part II-B (xvi) Scope

In view of the aforementioned objection, the independent claim 1 is amended to
clearly define the scope of the invention for which the protection is claimed.
Therefore, the Applicant respectfully requests the Learned Examiner to waive the
above objection.

Part II-B (xvii) Clarity and Conciseness

In view of the aforementioned objection, the claims are amended to include the
reference numerals and the terms “first position” and “second position” are replaced
by the terms “open position” and “closed position”. Therefore, the Applicant
respectfully requests the Learned Examiner to waive the above objection.

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 Part II-B (xviii) Definitiveness
In view of the aforementioned objection, the Applicant has amended the
independent claim 1 to recite the inventive step of the present invention more
clearly. The amended claim 1 now sufficiently delineates the inventive step from
the known feature. Therefore, the Applicant respectfully requests the Learned
Examiner to waive the above objection.

Part II-B (xix) Other Requirements

In view of the point (1) of the aforementioned objection, the Applicant has
submitted, on September 13, 2017, Form 30 for paying the balance fees for extra
claims and pages as amended in the international phase along with a petition U/R
137 to take the said fees on record. Further, the Applicant submits that the
amendments in the claims filed under Article 28 were made in order to reduce the
filing fees of the patent application. Since the Applicant has to now pay the total
fees, the Applicant wishes to revert to the original claims 1-41. Accordingly, the
Applicant has presently amended claims based on the original PCT claims 1-41 on
record. The acknowledgement receipt of filing the Form 30 with balance fees for
additional claims and pages along with petition U/R 137 is attached herewith for
ready reference of the Learned Examiner.

In view of the point (2) of the aforementioned objection, the Applicant submits that
all the relevant prior art to the best of the Applicant’s knowledge is mentioned in
the “background of the invention” section of the present patent application.

Therefore, the Applicant respectfully requests the Learned Examiner to waive the
above objection.

Part III Formal Requirements

Our response to the objections that are raised in the formal requirements, is provided
as follows:

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 Part III (1) Priority Details

In view of the above objection, the PCT notification regarding submission or

transmittal of priority documents (PCT – IB 304) has already been submitted during
the filing of this application that is on October 27, 2009. Further, the Applicant
submits that the original priority documents (US Patent Application No. 60/915,021
and US Patent Application No. 12/099,509) are already in English language.
Therefore, the Applicant respectfully requests the Learned Examiner to waive the
above objection.

Part III (2) Statement and Undertaking (Form 3 details)

In view of the above objection, the Applicant has submitted the updated Form 3 on
August 3, 2017, along with a petition U/R 137 for condoning the delay in filing the
updated Form 3.

The Applicant has also submitted the search/examination reports issued by foreign
patent offices along with the granted claims of the corresponding foreign
applications on August 3, 2017.

Part III (3) Other Deficiencies

In response to the point (i) of the above objection, the complete specification as per
Rule 9(1)(d) is submitted herewith.

In view of the point (ii) of the above objection, the full name of the Patent Agent
and the Registered Patent Agent No. is provided with the signature.

In view of the point (iii) of the above objection, the drawing sheets and fresh Form
5 bearing the name of the Applicant and the application number according to the
required format are attached herewith.

In view of the point (iv) of the above objection, the Applicant wishes to pursue with
the originally filed claims 1-41 of the PCT application. Accordingly, the Applicant

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is not submitting a marked-up copy as instructed to file in order to take Form 13
submitted on October 27, 2009. The Applicant requests the Learned Examiner
to not to take the said Form-13 (filed on October 27, 2009) on record. Further,
we are submitting, herewith, the claim amendments made according to the claims
1-41 of the PCT application no. PCT/US2008/004607 filed at the International
Bureau. We request the Learned Examiner to take the presently amended claims on
record.

PRAYER

It is therefore prayed that:

(a) the objections may be waived;
(b) the application may be favourably considered for early grant; and
(c) a personal hearing may be granted in the event of any outstanding issue
under section 14 and section 80 of the prevailing Indian Patents Act.

Yours faithfully,

(GIRISH VIJAYANAND SHETH)

Patent Agent No. IN/PA – 1022
KRISHNA & SAURASTRI ASSOCIATES

Enclosed:

1. Complete Specification with Drawings on Form 2

2. Clean copy and Marked copy of Claims
3. Clean copy and Marked copy of Abstract
4. Fresh Form 1 and Fresh Form 2 bearing amended title (Title Page only)
5. Fresh Form 5 bearing the application number
6. Acknowledgement receipt of filing the Form 30 (for payment of the balance fees
for extra claims and pages amended according to the PCT application) along with
Petition U/R 137 for condoning the delay in filing the same
SBK/GS/RJ

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