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 .
DETAILED ACTION
This correspondence is in response to Applicant’s Reply filed on 12/17/2025. Claims 1-5 are canceled and Claims 6-13 are newly added and pending. THIS ACTION HAS BEEN MADE FINAL.
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 9 and 13 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites “wherein said cantilevered beams shall be particularly configured so that there shall be no probability of risk of failure due to plastic deformation, that is, said beams shall remail under load indefinitely with no change in beam strength.” The original specification is silent with any discussion regarding “plastic deformation” and “beams shall under load with no change in beam strength.” Neither of these features are described in the specification in a manner that reasonably conveys that the inventor was in possession of such claimed subject matter. This claim should be canceled.
Claim 13 recites: “whereof said cut-thru slots and beam configuration may be configured directly within an equipment main frame so to be an integral mounting surface ready to accept said MC/EMC.” The original specification is silent with regard to the slots and beam configuration being “configur[ed] directly within an equipment main frame.” This recitation is not described in the specification in a manner that reasonably conveys that the inventor was in possession of such claimed subject matter. This portion of the claim should be deleted.
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 6-13 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.
Claim 6 recites “a substrate body having a generous tolerance flat form surface condition that does not meet the installation requirement specified by most manufacturers of highly precision mechanical and/or electro-mechanical components (MC/EMC) such as, just for example, linear motors and lasers.” This recitation of what the “generous tolerance flat form surface condition” is unclear because the recitation does not refer to something specific flat form surface condition requirements. Rather the recitation attempts to define the surface condition with respect to a general and vague reference to installation requirements of unclaimed components. The claim must be definite and particularly point out and distinctly claim the subject matter the inventor regards as their invention. Appropriate correction is required. For the purposes of Examination, this recitation is interpreted as comprising a substrate body that has a flat surface that does not have the specific flatness installation requirements that precision components would require.
Claim 6 recites “simulation of a particularly precision flat form surface condition.” This recitation is unclear because it does not particularly describe the “particular precision flat form surface.” As a result, it is unclear what this recitation is attempting to claim. Appropriate correction is required. For the purposes of examination, this recitation is being interpreted to mean: simulation of a flat form surface.”
Claim 6 also recites the phrase “is configure to comprise” which is unclear because it is unclear what that phrase means. If the substrate body has slots then the phrase should be “said substrate body comprises a predetermined pattern of--.” Appropriate correction is required.
Claim 7 recites “said substrate has beam strength greater than the combined beam strength of all said cantilever beams configured within it.” It is unclear how the substrate (body) has a “beam strength” when it appears that the substrate has not been described as a beam, unlike the cantilevered beams. It appears the “beam strength” is meant to refer to a moment of inertia of the substrate (body). Appropriate correction or clarification is required.
Claim 8 recites the limitation "the beam strength of said MC/EMC components." There is insufficient antecedent basis for this limitation in the claim. Applicant should amend the claim to recite “a beam strength of said MC/EMC component.”
Claim 8 recites “wherein said cantilevered beams are particularly configured so their combined beam strength is less than the beam strength of said MC/EMC component.” This limitation is indefinite because the MC/EMC component is not positively claimed and also the strength of the MC/EMC component is not specifically recited. This claim attempts to define the strength of the invention in relation to an element that is not a required element of the invention. Moreover, it is unclear strength the cantilever beans are. Appropriate correction is required.
Claim 9 recites “wherein said cantilevered beams shall be particularly configured so that there shall be no probability of risk of failure due to plastic deformation, that is, said beams shall remail under load indefinitely with no change in beam strength.” As discussed above, the specification is silent regarding “plastic deformation” and “beams shall remail under load indefinitely with no change in beam strength.” Additionally, it is unclear how the invention “is configured” to achieve such functions even if they were adequately recited in the original specification. As a result, this claim is unclear and indefinite.
Claim 10 recites “wherein said cantilever beams shall be particularly configured so total force required to deflect cantilever beams upward to intimately interface MC/EMC is less than force needed to deflect said MC/EMC.” The bolded language is indefinite because it is unclear if “shall be” is describing what the invention is or what the invention shall be. Note, the claims must recite what the invention is. Additionally, the phrase “particularly configured” is unclear because the claim lacks particular recitation of structure or elements that would achieve the result of configuring the cantilever beams to deflect before the MC/EMC deflects. Appropriate correction is required.
Claim 11 recites “shall be particularly configured” and is also unclear if “shall be” is describing what the invention is or what the invention shall be. Additionally, the phrase “particularly configured” is unclear because the claim lacks particular recitation of structure or elements that would achieve the result of configuring the cantilever beams to allow assembly technician to fasten/torque screws per MC/EMC manufacturer's specification so to prevent linear/angular movement of said MC/EMC during normal operation so to mitigate high probability of risk of failure of MC/EMC performance. Appropriate correction is required.
The remaining dependent claims are rejected by virtue of their dependencies.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 10,278,499 to McElveen (McElveen).
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Regarding Claim 6: McElveen discloses a flat mount component comprising a substrate body (See Annotated Fig. A) having a generous tolerance flat form surface condition (note that the surface is flat) . . . whereof said substrate body (See Annotated Fig. A) is configured to comprise: a predetermined pattern of thru-cut slots (See Annotated Fig. A) forming cantilevered beams (See Annotated Fig. A), each with its distal end configured with a thru-cut hole (See Annotated Fig. A) to facilitate fastening a particular MC/EMC such that, each cantilever beam deflects independently upward, first creating opposing forces between invention substrate body and MC/EMC followed by, each beam deflecting upward (note that each beam is able to deflect away from the plane of the flat surface when an object is mounted thereto) as intended to make intimate contact with MC/EMC so to allow fastening each screw to manufacturer required torque specification without causing MC/EMC to bend, which is the invention design intent; simulation of a particularly precision flat form surface condition.
As discussed above in the 112 rejection, the generous tolerance flat form surface condition, is being interpreted as a substrate body that has a flat surface that does not have the specific flatness installation requirements that precision components would require. Here, McElveen does not state that the surface is intended to meet installation requirements by most manufactures of highly precision mechanical components. As such, a person of ordinary skill in the art and at a time before the effective date of invention, would reasonably understand that McElveen has a flat surface that does not meet the installation requirements specified by most manufacturers of highly precision mechanical and/or electro-mechanical components (MC/EMC).
Also, all recitations of the MC/EM components are found within intended use statements which mean that the MC/EM components are not positively required elements of the flat mount component. Rather the recitations containing MC/EMC are describing how the flat mount component is intended to be used.
Regarding Claim 7: McElveen does not specifically disclose that said substrate has beam strength greater than the combined beam strength of all said cantilever beams configured within it. However, it would have been obvious to a person skilled in the art at a time before the date of the invention to understand that the beams (See Annotated Fig. A) of McElveen would be more likely to bend with respect to the flat surface of the device because the beams have a beam strength that is less than the beam strength of the flat surface.
Regarding Claim 8: As noted above the claim is unclear because the specific strength of the cantilevered beams are note claimed is particularity. The cantilevered beams (See Annotated Fig. A) of McElveen have some unspecified beam strength which is less than the beam strength of some particularly strong MC/EMC device.
Regarding Claim 9: As discussed above, it is unclear what Applicant is attempting to claim here. As best understood, the claimed cantilever beams have some level of strength to resist plastic deformation while in use. To the same extent as the claimed invention, McElveen discloses and teaches cantilevered beams (See Annotated Fig. A) that are configured to resist plastic deformation and shall remain under load with no change in beam strength.
Regarding Claim 10: Similar to the issues discussed in Claim 8, this claim also attempts to claim the beam strength of the beams with respect to unclaimed and undetermined MC/EMC components. The cantilevered beams of McElveen have some unspecified beam strength which is less than the beam strength of some particularly strong MC/EMC device. As such, it would have been obvious to a person of ordinary skill to understand that said cantilever beams (See Annotated Fig. A) shall be particularly configured so total force required to deflect cantilever beams upward to intimately interface MC/EMC is less than force needed to deflect said MC/EMC.
Regarding Claim 11: McElveen discloses a flat mount component wherein said cantilever beams shall be particularly configured to allow (by having mounting holes (See Annotated Fig. A) bat the distal end of the beams) assembly technician to fasten/torque screws per MC/EMC manufacturer's specification so to prevent linear/angular movement of said MC/EMC during normal operation so to mitigate high probability of risk of failure of MC/EMC performance.
Regarding Claim 12: McElveen discloses a flat mount component of claim 1 wherein each said cut-thru slot (See Annotated Fig. A) contains only one cantilever beam (See Annotated Fig. A) so to isolate said beam from other beams and relative forces.
Regarding Claim 13: McElveen discloses a flat mount component whereof said cut-thru slots (See Annotated Fig. A) and beam configuration may be configured directly within an equipment main frame (Note that the device of McElveen also may be configured directly within an equipment main frame such as a rack, however such a recitation is not required but only recited as this “may be”) so to be an integral (See generally Annotated Fig. A) mounting surface ready to accept said MC/EMC.
Response to Amendment
Applicant’s arguments with respect to canceled claim(s) 1-5 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 ERET C MCNICHOLS whose telephone number is (571)270-7363. The examiner can normally be reached Monday - Friday: 9:00 - 5:00 (Eastern).
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ERET C. MCNICHOLS
Primary Examiner
Art Unit 3632
/ERET C MCNICHOLS/Primary Examiner, Art Unit 3632