DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 . 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 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.
Election/Restrictions
Claims 3, 8, 9, and 14-21 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 25, 2024.
Specification
The amendment(s) to the specification filed January 2, 2026 is approved.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 24 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
New claim 24 positively recites “a second object” in line 5 and “a third object” in line 7. The disclosure as originally filed does not provide for the second and third objects being a part of the positioning device, and therefore, claim 24 is not enabled. This same issue is also present in claim 24, lines 9 and 11. The disclosure sets forth first, second, and third objects as being used as part of an intended use of a positioning device, and not as part of the device itself. If Applicant wishes to positively claim the objects, the claim should be appropriately amended to read as a combination claim of the positioning device and objects, and not a subcombination claim of only the positioning device, as is currently claimed.
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, 4-7, 10-13, 22, and 23 are 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 first sets forth “a second object” and “a third object” as part of an intended use in lines 8-10. However, amended claim 1 now goes on to positively recite the second and third objects in lines 11-12. It is therefore unclear from the claim whether Applicant is intending to claim the combination of the positioning device and objects, or only the subcombination of the positioning device. For the purpose of this action, the Examiner has interpreted the claim as being directed to the subcombination of the positioning device, given the preamble of the claim. As such, limitations directed to structure not a part of the positioning device itself are given limited patentable weight. This issue is also present in amended claim 23, lines 11-15.
Claim Rejections - 35 USC § 102
Claims 1, 4-7, 10-13, and 22-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 111857258 (Shao; the citations of which are taken from the attached translation).
Regarding claim 1, Shao discloses a positioning device (see Figures 1-10 and annotated Figures 1 and 2 below), comprising:
a body (1) adapted to be disposed on a first object (via protrusions 6; see annotated Figure 1 below);
a first positioning member (2; middle of Figures 1 and 2) laterally movably connected to the body (see, e.g., Figure 1 vs. Figure 2); and
a second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) laterally movably connected to the body (via its connection to the first positioning member, as shown in Figures 1-4),
wherein the first positioning member is located between the second positioning member and a bottom wall (see annotated Figure 2 below) of the body, and the first positioning member and the second positioning member are independently movable relative to each other on the body (see, e.g., Figure 2 vs. Figure 4), and
wherein a second object (see annotated Figure 1 below) is adapted to cross the second positioning member and the first positioning member so as to arrange the second object on the body, and a third object (see annotated Figure 1 below) is adapted to cross the second positioning member and be arranged on the first positioning member (see Figure 9), and
wherein one end of the second object on the body and one end of the third object on the first positioning member are aligned with each other (see NOTE below).
NOTE: It is to be noted the claim does not specify how the ends are aligned (e.g. vertically, horizontally), and as such, an alignment axis may be arbitrarily selected, such as that shown below in annotated Figure 1. See also the 112 rejection above.
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Figure 1. Annotated Figure 9 of Shao
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Figure 2. Annotated Figure 9 of Shao
Regarding claim 4, Shao discloses the second object is arranged on the first positioning member (2; middle of Figures 1 and 2), the second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) is elastically restored by an elastic element (5); alternatively, when the second object is arranged on the body, the first positioning member (2) is elastically restored by an elastic element (5), so as to clamp the second object between the body and the first positioning member; and wherein when the third object is arranged on the first positioning member, the second positioning member is elastically restored by an elastic element (see annotated Figure 2 above), so as to clamp the third object between the first positioning member and the second positioning member (see annotated Figure 1 above and paragraph [0042]).
Regarding claim 5, Shao discloses the second object and the third object are positioned at the positioning device, the second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) is adapted to resist elasticity and thus moves (against the elastic element of the second assembly shown in annotated Figure 2 above), so that the third object can be removed from the positioning device; and wherein when the third object is removed from the positioning device, the second positioning member and the first positioning member (2; middle of Figures 1 and 2) are adapted to resist elasticity and thus move (against the elastic elements of the first and second assemblies shown in annotated Figure 2 above), so that the second object can be removed from the positioning device (see Figure 9 and paragraph [0042]).
Regarding claim 6, Shao discloses the body (1) comprises the bottom wall, two first sidewalls opposite to each other and a second sidewall (see annotated Figure 2 above); the bottom wall is adapted to be disposed on a surface of the first object (see Figure 9); the second sidewall and the two first sidewalls are connected to the bottom wall; the second sidewall is connected between the two first sidewalls (see annotated Figure 2 above); and the body comprises an inlet (the cutout portions on either side of protrusion 8 in Figure 5 can be said to constitute “inlets” as they are in the form of indentations) opposite to the second sidewall and for placing the second object or the third object (see Figure 9).
Regarding claim 7, Shao discloses a first elastic assembly and a second elastic assembly (see annotated Figure 2 above); wherein, the first elastic assembly comprises a first sleeve protrusion (15) arranged at the first positioning member (2; middle of Figures 1 and 2), and the second elastic assembly comprises a second sleeve protrusion (15) arranged at the second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2).
Regarding claim 10, Shao discloses the body (1) comprises a first chute and a second chute, the first positioning member (2; middle of Figures 1 and 2), the second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) or the body is provided with a coupling member corresponding to the first chute or the second chute, and the second chute is provided at the first positioning member or the second positioning member.
Regarding claim 11, Shao discloses two or all of the first object, the second object and the third object (see annotated Figure 1 above) are electrically connected to each other (via their connection to a motherboard; see Figure 9 and paragraph [0009]).
Regarding claim 12, Shao discloses a method of use of a positioning device, using the positioning device of claim 1 (see rejection of claim 1 above), the method of use comprising:
disposing the body (1) on the first object (see annotated Figure 1 above);
configuring the second object (see annotated Figure 1 above) to laterally push away (via elastic assembly) or cross the second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) so as to be arranged on the first positioning member (2; middle of Figures 1 and 2);
moving the first positioning member so that the second object is arranged on the body (see Figure 9); and
configuring the third object to laterally push away (via elastic assembly) or cross the second positioning member so as to be arranged on the first positioning member (see Figure 9).
Regarding claim 13, Shao discloses an elastic member (5), having two ends respectively pressing against the body (1) and the first positioning member (2; middle of Figures 1 and 2) or the second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2), so that the first positioning member or the second positioning member reciprocally moves horizontally or moves rotationally relative to the body (see, e.g., Figure 1 vs. Figure 3).
Regarding claim 22, Shao discloses the first object, the second object or the third object (see annotated Figure 1 above) is a printed circuit board (PCB), a circuit board, a chip, a heat sink, a cooling fin, a connector, an iron part or a plastic part (see Figure 9 and paragraph [0009]; the objects can be said to be at least a circuit board, chip, or connector).
Regarding claim 23, Shao discloses a positioning device (see Figures 1-10 and annotated Figures 1 and 2 above), comprising:
a body (1) adapted to be disposed on a first object (via protrusions 6; see annotated Figure 1 above);
a first positioning member (2; middle of Figures 1 and 2) movably connected to the body (see, e.g., Figure 1 vs. Figure 2);
a second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) movably connected to the body (via its connection to the first positioning member, as shown in Figures 1-4);
a first elastic assembly (5) comprising a first sleeve protrusion (15) arranged at the first positioning member (see annotated Figure 2 above); and
a second elastic assembly (see annotated Figure 2 above) comprising a second sleeve protrusion (15) arranged at the second positioning member (see annotated Figure 2 above),
wherein the first positioning member and the second positioning member are independently movable relative to each other on the body (see, e.g., Figure 2 vs. Figure 4), and
wherein a second object (see annotated Figure 1 above) is adapted to cross the second positioning member and the first positioning member so as to arrange the second object on the body, and a third object (see annotated Figure 1 above) is adapted to cross the second positioning member and be arranged on the first positioning member (see Figure 9), and
wherein one end of the second object on the body and one end of the third object on the first positioning member are aligned with each other (see NOTE above).
Regarding claim 24, Shao discloses a positioning device (see Figures 1-10 and annotated Figures 1 and 2 above), comprising:
a body (1) adapted to be disposed on a first object (via protrusions 6; see annotated Figure 1 above),
a first positioning member (2; middle of Figures 1 and 2) laterally movably connected to the body (see, e.g., Figure 1 vs. Figure 2),
a second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) laterally movably connected to the body (via its connection to the first positioning member, as shown in Figures 1-4),
a second object (see annotated Figure 1 above) adapted to cross the second positioning member and the first positioning member, and to be arranged on the body and in contact therewith (see Figure 9 and annotated Figures 1 and 2 above), and
a third object (see annotated Figure 1 above) adapted to cross the second positioning member, and to be arranged on the first positioning member and in contact therewith (see Figure 9 and annotated Figures 1 and 2 above),
wherein the first positioning member is located between the second positioning member and a bottom wall (see annotated Figure 1 above) of the body, and the first positioning member and the second positioning member are independently movable relative to each other on the body (see Figure 2 vs. Figure 4).
Regarding claim 25, Shao discloses a positioning device (see Figures 1-10 and annotated Figures 1 and 2 above), comprising:
a body (1) adapted to be disposed on a first object (via protrusions 6; see annotated Figure 1 above),
a first positioning member (2; middle of Figures 1 and 2) movably connected to the body (see, e.g., Figure 1 vs. Figure 2);
a second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) movably connected to the body (via its connection to the first positioning member, as shown in Figures 1-4);
a first elastic assembly (5) comprising a first sleeve protrusion (15) arranged at the first positioning member (see annotated Figure 2 above),
a second elastic assembly (see annotated Figure 2 above) comprising a second sleeve protrusion (15) arranged at the second positioning member (see annotated Figure 2 above),
a second object (see annotated Figure 1 above) adapted to cross the second positioning member and the first positioning member, and to be arranged on the body and in contact therewith (see Figure 9 and annotated Figures 1 and 2 above), and
a third object (see annotated Figure 1 above) adapted to cross the second positioning member, and to be arranged on the first positioning member and in contact therewith (see Figure 9 and annotated Figures 1 and 2 above),
wherein the first positioning member and the second positioning member are independently movable relative to each other on the body (see Figure 2 vs. Figure 4).
Response to Arguments
Applicant's arguments filed January 2, 2026, have been fully considered but they are not persuasive.
On page 13, Applicant asserts Shao fails to disclose the newly added limitation to independent claims 1 and 23, “wherein one end of the second object on the body and one end of the third object on the first positioning member are aligned with each other”. The Examiner respectfully disagrees and notes the claim does not specify how the ends are aligned (e.g. vertically, horizontally), and as such, an alignment axis may be arbitrarily selected, such as that shown below in annotated Figure 1.
On page 11, Applicant asserts Shao fails to disclose the limitations of new independent claims 24 and 25 with respect to the second and third objects. Applicant’s attention is directed to the 112(a) rejection above as to the limitations not being enabled. Further, as shown in Figure 9 of Shao, the second and third objects cross the respective members and are arranged and in contact with their respective members.
On page 15, Applicant asserts Shao fails to disclose the first positioning member (2; middle of Figures 1 and 2) and the second positioning member (2, adjacent to sliding plate 3; top of Figures 1 and 2) being independently movable relative to each other on the body (1), as set forth in new independent claims 24 and 25. The Examiner respectfully disagrees and directs Applicant’s attention to Figure 2 vs. Figure 4, which shows the first positioning member and the second positioning member being independently movable relative to each other on the body. While the second positioning member of Shao is not directly connected to the body, it is still independent movable relative to the first positioning member on the body, via its connection to the first positioning member.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Josh Skroupa whose telephone number is (571)270-3220. The examiner can normally be reached M-F 7:30 AM – 3:30 PM ET.
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/Josh Skroupa/Primary Examiner, Art Unit 3678
January 20, 2026