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 .
Election/Restrictions
Claims 27 – 37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and/or species (Invention I, Species A-2 – A-6, and/or Species B-2), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 23, 2026.
Applicant's election with traverse of Invention I, Species A-1, and Species B-1 (claims 19 – 26 and 38) in the reply filed on February 23, 2026 is acknowledged. The traversal is on the ground(s) that the subject matter of the claimed inventions are sufficiently related that a thorough search of any one invention and species would necessarily include the subject matter of the non-elected invention and species. This is not found persuasive because a primary form of evidence of a burden on the examiner is a showing of separate classification of the distinct inventions. Such is the case here. The elected invention (Invention I) is classified in B23Q 1/50, while the non-elected invention (Invention II) is classified in H02N 2/025. A search of the elected invention would not require a search of the non-elected invention. Having to perform two separate, non-overlapping searches in a single application would indeed be a burden on the examiner. Likewise, regarding the restriction of species, a primary form of evidence of a burden on the examiner is a showing of divergent subject matter. Such is the case here. The elected species (Species A-1 and Species B-1) include divergent subject matter compared to the non-elected species (Species A-2 – A-6 and Species B-2; Figures 11 – 28 and page 4, third paragraph). Having to perform multiple searches for non-overlapping and divergent species would indeed be a burden on the examiner. Applicant argues that claim 19 is generic towards all species. Examiner agrees with this assertion and notes that claim 19 has not been withdrawn.
Regarding claims 30 – 33, Examiner notes that claims 30 and 32 each recite the limitation “the encapsulated piezoelectric linear drives.” There is insufficient antecedent basis for these limitations in the claims. Therefore, Examiner is interpreting claims 30 and 32 so as to depend upon claim 27, rather than claim 26, which provides antecedent basis for the limitations. Examiner further notes that claims 30 – 33 are clearly directed towards non-elected Species B-2. Therefore, claims 30 – 33 are being withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 23 is objected to because of the following informalities: Claim 23 recites the limitation “wherein the guide between the stator and the central slider plate and/or the guide between the central slider plate and the supper slider plate is configured as guide rails.” Examiner believes this to be grammatically incorrect and will interpret the limitation as “wherein the guide between the stator and the central slider plate and/or the guide between the central slider plate and the supper slider plate are configured as guide rails.”
Appropriate correction is required.
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:
“resilient force absorbing device” recited in claim 24
“actuating element” recited in claim 26
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.
The limitation “resilient force absorbing device” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“device”).
(B) The generic placeholder is modified by functional language (“resilient force absorbing” or ‘for absorbing resilient force’ and “configured to absorb a driving force of the piezoelectric linear drives”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “actuating element” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“element”).
(B) The generic placeholder is modified by functional language (“actuating” or ‘for actuating’ and “configured as a friction element”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “actuating element” will be interpreted so as to comprise a “hemispherical friction nose,” as taught by the Specification (page 12, first paragraph), or an equivalent thereof.
Claim Rejections - 35 USC § 112
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 19 - 26 and 38 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 19 recites the limitation “at least one piezoelectric linear drive” in the last paragraph of the claim. It is unclear as to whether Applicant intends the limitation to refer to one of the “at least two piezoelectric linear drives” previously set forth in the claim, or whether Applicant intends to set forth a second set of ‘piezoelectric linear drives’ which are separate and independent from the ‘piezoelectric linear drives’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “at least one piezoelectric linear drive of the two piezoelectric linear drives.”
Claim 19 further recites the limitation “a first translational direction or a first rotary direction” in the last paragraph of the claim. It is unclear as to whether Applicant intends the limitation to refer to one of the “two independent translational directions or two independent rotary directions” previously set forth in the claim, or whether Applicant intends to set forth a second set of ‘translational directions or rotary directions’ which are separate and independent from the ‘translational directions or rotary directions’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “a first translational direction of the two independent translational directions or a first rotary direction of the two independent rotary directions.”
Regarding claim 20, the phrase "preferably" in the limitation “preferably at an angle of 90° to each other” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 21 recites the limitation “at least one translation direction or at least on rotary direction.” It is unclear as to whether Applicant intends the limitation to refer to any one of the “two independent translational directions or two independent rotary directions” previously set forth in claim 19, whether Applicant intends the limitation to specifically refer to the “first translation direction of the two independent translational directions or a first rotary direction of the two independent rotary directions’ previously set forth in claim 19, or whether Applicant intends to set forth a second set of ‘translational directions or rotary directions’ which are separate and independent from the ‘translational directions or rotary directions’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “the first translation direction or the first rotary direction.”
Claim 22 recites the limitation “a guide” It is unclear as to whether Applicant intends the limitation to refer to one of the “at least one guide” previously set forth in claim 21, or whether Applicant intends to set forth a second ‘guide’ which is separate and independent from the ‘guide’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to set forth a second set of guides which are separate and independent from the ‘at least one guide’ previously set forth.
Claim 23 recites the limitation “the guide between the central slider plate and the upper slider plate.” It is unclear as to whether Applicant intends the limitation to refer to the ‘at least one guide for the upper slider plate’ previously set forth in claim 21, or whether Applicant intends the limitation to refer to the ‘guide provided between the central slider plate and the upper slider plate’ previously set forth in claim 22. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to the ‘guide provided between the central slider plate and the upper slider plate’ previously set forth in claim 22.
Claim 23 further recites the limitation “wherein the guide rails are provided each on ... respectively of the central slider plate and/or the upper slider plate.” Applicant’s intent of the limitation is generally unclear. For the purposes of this Office Action, Examiner will interpret the limitation as “wherein the guide rails are provided each on ... a side of the central slider plate and a side of the upper slider plate.”
Claim 26 recites the limitation “the friction elements.” There is insufficient antecedent basis for the limitation in the claim. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to the “at least one actuating element” previously set forth in the claim.
Claim 38 recites the limitation “wherein the at least two piezoelectric linear drives attached to the stator are arranged at an angle of 90° to each other.” It is unclear as to whether Applicant intends the limitation to refer to, and further define, the limitation of “wherein the at least two piezoelectric linear drives attached to the stator are arranged at an angle relative to each other” previously set forth in claim 20, or whether Applicant intends the limitation to set forth an additional ‘angle’ which is separate and independent from the ‘angle’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation “wherein the angle between the at least two piezoelectric linear drives attached to the stator is 90°.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) 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 of the claimed invention.
Claim(s) 19 – 26 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arakawa (U.S. Patent Application Publication Number 2019/0149066).
As to claim 19, Arakawa teaches a linear table movable in two dimensions (abstract) comprising: a stator (figure 2, element 3 being the ‘stator’; paragraph 58); an upper slider plate movable relative to the stator in two independent translational directions (figure 2, element 5 being the ‘upper slider plate’ and directions X and Y being the ‘two independent translational directions’; paragraph 58); at least two piezoelectric linear drives for moving the upper slider plate in the two translational directions (figures 2 – 6, elements 200X and 200Y being the ‘at least two piezoelectric linear drives’; paragraphs 60 – 63); and a central slider plate arranged between the stator and the supper slider plate (figure 2, element 4 being the ‘central slider plate’; paragraph 58), wherein the at least two piezoelectric linear drives are each attached to the stator and configured to move the upper slider plate in the two translational directions (figures 2 – 6, elements 200X, 200Y, 3, and 5; paragraphs 60 – 63), and wherein one piezoelectric linear drive of the two piezoelectric linear drives is in contact with the upper slider plate through an opening in the central slider plate and configured to move the upper slider plate in a first translational direction of the two independent translational directions (figures 1, 5, and 6, element 200Y being the ‘one piezoelectric linear drive,’ element 412 being the ‘opening in the central slider plate,’ direction Y being the ‘first translational direction,’ and elements 5 and 4; paragraphs 62 – 63).
As to claim 20, Arakawa teaches that the at least two piezoelectric linear drives attached to the stator are arranged at an angle relative to each other (figures 3 and 5, elements 200X and 200Y).
As to claim 21, Arakawa teaches that at least one guide for the upper slider plate is provided and configured to guide the upper slider plate relative to the stator in the first translational direction (figure 2, left 411 being the ‘at least one guide,’ elements 5, 3, and direction Y, see below; paragraphs 62 – 63).
As to claim 22, Arakawa teaches a second set of guides, wherein one guide of the second set of guides is provided between the stator and the central slider plate and a second guide of the second set of guides is provided between the central slider plate and the upper slider plate (figure 2, left element 311 being the ‘one guide of the second set of guides’ and the right element 411 being the ‘second guide of the second set of guides’; paragraphs 60 – 63).
As to claim 23, Arakawa teaches that the guide between the stator and the central slider plate and the guide between the central slider plate and the upper slider plate are configured as guide rails (figure 2, left element 311 and right element 411; paragraphs 60 and 62), and wherein the guide rails are each provided on a side of the central slider plate and a side of the upper slider plate (figure 2, left element 311, element 4, right element 411, and element 5).
As to claim 24, Arakawa teaches that the central slider plate has a resilient force absorbing device configured toa absorb a driving force of the piezoelectric linear drives (figure 6, element 160 being the ‘absorbing device’; paragraph 72).
As to claim 25, Arakawa teaches that the at least two piezoelectric linear drives are configured as at least two piezoelectric frictional contact actuators (figures 3 – 6 and 10, elements 200X and 200Y; paragraphs 69 – 72).
As to claim 26, Arakawa teaches that the at least two piezoelectric frictional contact actuators each have an actuating element, comprising a hemispherical friction nose, configured as a friction element (figures 3 – 6 and 10, element 140 being the ‘actuating element’ and ‘hemispherical friction nose’; paragraphs 69 and 71).
As to claim 38, Arakawa teaches that the angle between the at least two piezoelectric linear drives is 90° (figures 3 and 5, elements 200X and 200Y).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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