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 .
Statement re Text of U.S. Code
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election (of species (iv), a fourth species of cover, depicted in Figure 8) was made without traverse in the reply filed on July 2, 2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“linear motion mechanism” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
Claims 1-2 and 4 are rejected 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.
In claim 1, line 16, the limitation “the cutaway parts” lacks sufficient antecedent basis in the claim, noting that no plural “cutaway parts” were previously recited. That said, it is additionally noted that each subsequent recitation of “the cutaway part” (i.e., subsequent to the recitation of “the cutaway parts” in claim 1, line 16) lacks sufficient antecedent basis in the claim, given that it is unclear which specific cutaway part of the plural cutaway parts previously recited (i.e., in lines 15 and 16 of claim 1) is intended to be referenced. See, for example, the recitations of “the cutaway part” in claim 1, line 18, claim 2, line 1, and claim 4, lines 2-3, and a further recitation in claim 4, line 3.
Claim Rejections - 35 USC § 102
Claims 1-2, as best understood in view of the above rejections based on 35 USC 112, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pat. No. 5,915,897 to Reynolds (hereinafter, “Reynolds”).
Note that Reynolds teaches a telescopic cover (20) for covering a linear motion mechanism (33; see Figure 1 and col. 3, lines 14-40, for example) configured to drive a movable part (24) in a direction (in the direction of the double ended arrow shown in Figure 1, along the transmission platform 22; see Figure 1 and col. 3, lines 14-40, for example) along a predetermined axis (i.e., an axis extending in the direction of the double ended arrow shown in Figure 1), the telescopic cover (20) comprising:
a plurality of cover pieces (34; see Figures 1-2 and col. 3, lines 47-61, for example) arranged in a nested manner (see Figure 1 and col. 3, lines 14-30, col. 4, lines 17-28, col. 4, lines 40-43, for example, as well as at least claim 1 of the reference, for example) and supported so as to be relatively moved in the driving direction (the aforedescribed horizontal direction in which 24 is driven to move) along the (aforedescribed) predetermined axis (see Figure 1 and col. 3, lines 14-30, col. 4, lines 17-28, col. 4, lines 40-43, for example, as well as at least claim 1 of the reference, for example), wherein,
a first cover piece (such as any of the cover pieces 34 except the smallest/innermost cover piece 34) of the plurality of cover pieces (34) includes a wiper (62) for wiping an outer surface of a second cover piece (i.e., another of the cover pieces 34 that is adjacent to the aforedescribed first cover piece and provided inside the first cover piece), the (aforedescribed) second cover piece being disposed adjacent to the (aforedescribed) first cover piece on an inner side of the (aforedescribed) first cover piece (see Figures 1-5 and col. 4, lines 17-39, for example),
the (aforedescribed) second cover piece (i.e., an inner cover piece 34) includes:
a “weir part” (such as 50) standing upright from the outer surface of the (aforedescribed) second cover piece toward an inner surface of the (aforedescribed) first cover piece (i.e., the outer cover piece 34 in which the second/inner cover piece 34 nests/telescopes; see at least Figure 1) at an edge of an area of the (aforedescribed) second cover piece, the area constantly overlapping the (aforedescribed) first cover piece (see Figures 1-5); and
a cutaway part (such as one of the through holes 48, and particularly, such as either of the through holes 48 labeled in the annotated reproduction of Figure 5 below as “CP1” or “CP2”, for example) formed by “cutting away” (re claims 1 and 2) at least a portion of the “weir part” (such as 50), the cutaway part(s) (CP1, CP2) being configured to communicate between an inside and an outside of the (aforedescribed) second (inner) cover piece (see Figures 5 and 3, noting that Reynolds teaches that the apertures 48 extend through 50; see col. 3, line 50 through col. 3, line 65, for example), and
the cutaway part (CP1 or CP2, for example) is provided at a position different from a position of the linear motion mechanism (33) in a (horizontal) direction perpendicular to the (aforedescribed) predetermined axis (as can be seen in Figures 1 and 5, noting that 33 in Figure 1 is located in the center of 20 in the horizontal direction that is perpendicular to the aforedescribed horizontal driving direction, and noting that CP1 and CP2 in Figure 5 are located spaced from the center of 50/34 in that perpendicular horizontal direction and proximate to the lateral edges of 34, i.e., lateral with respect to the aforedescribed horizontal driving direction).
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Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed October 16, 2025 have been fully considered but they are not persuasive.
Applicant has alleged that U.S. Pat. No. 5,915,897 to Reynolds (hereinafter, “Reynolds”) does not teach the following limitation(s) from independent claim 1:
the second cover piece includes:
a weir part standing upright from the outer surface of the second cover piece toward an inner surface of the first cover piece at an edge of an area of the second cover piece, the area constantly overlapping the first cover pieces; and
a cutaway part formed by cutting away at least a portion of (i) the weir part or (ii) the area, the cutaway parts being configured to communicate between an inside and an outside of the second cover piece, and
the cutaway part is provided at a position different from a position of the linear motion mechanism in a direction perpendicular to the predetermined axis.
However, such is not persuasive. In particular, as noted in the above rejection of claim 1 under 35 USC 102(a)(1) as being anticipated by Reynolds, Reynolds teaches
the (aforedescribed) second cover piece (i.e., an inner cover piece 34) includes:
a “weir part” (such as 50) standing upright from the outer surface of the (aforedescribed) second cover piece toward an inner surface of the (aforedescribed) first cover piece (i.e., the outer cover piece 34 in which the second/inner cover piece 34 nests/telescopes; see at least Figure 1) at an edge of an area of the (aforedescribed) second cover piece, the area constantly overlapping the (aforedescribed) first cover piece (see Figures 1-5); and
a cutaway part (such as one of the through holes 48, and particularly, such as either of the through holes 48 labeled in the annotated reproduction of Figure 5 below as “CP1” or “CP2”, for example) formed by “cutting away” (re claims 1 and 2) at least a portion of the “weir part” (such as 50), the cutaway part(s) (CP1, CP2) being configured to communicate between an inside and an outside of the (aforedescribed) second (inner) cover piece (see Figures 5 and 3, noting that Reynolds teaches that the apertures 48 extend through 50; see col. 3, line 50 through col. 3, line 65, for example), and
the cutaway part (CP1 or CP2, for example) is provided at a position different from a position of the linear motion mechanism (33) in a (horizontal) direction perpendicular to the (aforedescribed) predetermined axis (as can be seen in Figures 1 and 5, noting that 33 in Figure 1 is located in the center of 20 in the horizontal direction that is perpendicular to the aforedescribed horizontal driving direction, and noting that CP1 and CP2 in Figure 5 are located spaced from the center of 50/34 in that perpendicular horizontal direction and proximate to the lateral edges of 34, i.e., lateral with respect to the aforedescribed horizontal driving direction).
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On page 5 of the 10/16/2025 reply, Applicant indicates (in the paragraph beginning “[T]he outstanding Action alleges…”) that they disagree with the outstanding Action alleging that element 50 of Reynolds corresponds to the weir part recited in claim 1, and that they disagree with the outstanding Office Action alleging that “CP1” or “CP2” shown in the annotated reproduction of Figure 5 of Reynolds is formed by “cutting away” at least a portion of element 50. However, such disagreement is not persuasive, noting that Applicant has not provided any arguments or reasoning as to why the upstanding element 50 (that extends upwardly from an outer surface of the second cover piece toward an inner surface of the first cover piece) cannot be considered the claimed “weir part standing upright from the outer surface of the second cover piece”, nor any arguments or reasoning as to why the through holes 48 in 50 that are labeled as CP1, CP2 cannot be considered the claimed “cutaway part formed by cutting away at least a portion of” the “weir part” 50.
Additionally, it is noted that on page 5 of the reply filed 10/16/2025, Applicant has asserted the following:
As a consequence of the above-described limitations, the claimed invention can provide an effect which is not disclosed or contemplated by Reynolds. That is, even if the cutting fluid and the like pass through the wiper and enter the inside of the cover piece, the fluids can be discharged downward through the cutaway parts so as not to fall on the linear motion mechanism. Accordingly, it is possible to protect the linear motion mechanism with the claimed structure. See, e.g., 0049 of the present Application as published.
However, such is not persuasive, noting that such arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims (emphasis added) patentably distinguishes them from the references. The fact that the presently disclosed invention may function differently or (as the present invention is disclosed) have different features than the telescopic cover of Reynolds does not change the fact that Reynolds teaches each limitation of present claims 1 and 2.
On page 5 of the reply filed 10/16/2025, Applicant has additionally asserted the following:
Since Reynolds is silent about cutting fluid and the like that pass through the wiper and enter the inside of the cover piece, Reynolds does not teach or suggest, nor render obvious, the limitations of amended claim 1.
However, such is not persuasive, noting that there is no claim language that has been provided so as to differentiate present claims 1-2 from the Reynolds reference. It is noted that whether or not Reynolds is silent about cutting fluid passing through the wiper and entering the inside of the cover piece is not relevant to the present claim language.
To the extent that Applicant’s arguments in the last paragraph of page 5 of the reply filed 10/16/2025 are intended to indicate that the same arguments are applicable to rejected dependent claim 2, then it is likewise noted that the above responses to those arguments apply equally to dependent claim 2.
Conclusion
Applicant's amendment necessitated any 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 ERICA E CADUGAN whose telephone number is (571)272-4474. The examiner can normally be reached Monday-Thursday, 5:30 a.m. to 4:00 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
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December 10, 2025