DETAILED ACTION
Election/Restrictions
Claim 1 is allowable. The restriction requirement between Species A-1 - A-6 and Species B-1 - B-2, as set forth in the Office action mailed on January 15, 2026, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of January 15, 2026 is partially withdrawn. Claims 27 - 33, directed to Species A-1 – A-6 and/or Species B-1 – B-2, are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claims 34 - 37, directed to Invention Group II, remain withdrawn from consideration because they do not all require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Interpretation
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
“driving element” recited in claim 27
“sealing element” recited in claim 28
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.
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.
The limitation “driving 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 (“driving” or ‘for driving’).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “sealing 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 (“sealing” or ‘for sealing).
(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 “sealing element” will be interpreted so as to comprise ‘one of an epoxy resin, adhesive, or rubber-elastic material,’ as taught by the Specification (page 5, third 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 24, 26 – 33 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 26 recites the limitation “each friction element.” It is unclear as to whether Applicant intends the limitation to refer to the ‘friction elements’ previously set forth in the claim, or whether Applicant intends to refer to ‘friction elements’ other than those previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “each of the friction elements.”
Claim 27 recites the limitation “in particular configured as encapsulated piezoelectric inertial or resonance drives.” The phrase “preferably” in the limitation renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. MPEP 2173.05(d).
Claim 27 further recites the limitation “each of which generates a deflection ...” The limitation is indefinite for several reasons. First, it is generally unclear what elements Applicant intends “each” to refer to. Secondly, Examiner notes that the claim is directed towards a ‘linear or rotary table movable in two dimensions.’ Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘generating a deflection,’ such that the claim is directed towards ‘moving a linear or rotary table in two dimensions,’ or whether Applicant intends the limitation to recite functional language, such that the claim is directed towards the ‘table’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “each of the two actuators being configured to generate a deflection ...”
Claim 28 recites the limitation “the interposition.” There is insufficient antecedent basis for the limitation in the claim.
As explained above, the claim limitations “resilient force absorbing device” and “driving element” each invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Regarding “resilient force absorbing device,” the Specification provides antecedent basis for the limitation and the claimed function of the limitation (page 4, second paragraph). However, the Specification fails to teach the structure required for the limitation to perform the claimed function. Likewise, the Specification further provides antecedent support for the limitation “driving element” and the limitation performing the claimed function (page 5, second paragraph and page 20, last paragraph). However, the Specification fails to teach the structure required for the limitation to perform the claimed function. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 27 – 33 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.
As explained above, each of the limitations “resilient force absorbing device” and “driving element” invoke interpretation under 35 U.S.C. 112(f). As further explained above, the Specification fails to teach sufficient structure of the limitations to perform their claimed functions. Therefore, the limitations are not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
Allowable Subject Matter
Claims 19 – 23 and 25 are allowed.
Claim 26 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.
The following is an examiner’s statement of reasons for allowance: Examiner’s closest art, Arakawa (U.S. Patent Application Publication Number 2019/0149066), was presented and discussed in the previous Office Action.
As explained in the previous Office Action, Arakawa teaches a stator, an upper slider plate, two piezoelectric linear drives for moving the upper slider plate in two translational directions, and a central slider plate arranged between the stator and the upper slider plate (figures 2 – 6, element 3 being the ‘stator,’ element 5 being the ‘upper slider plate,’ directions X and Y being the ‘two translational directions,’ elements 200X and 200Y being the ‘two piezoelectric linear drives,’ and element 4 being the ‘central slider plate’; paragraphs 58 – 63). However, Arakawa does not teach each of the two piezoelectric linear drive each being “directly” attached to the stator. This is because Arakawa expressly teaches one of the piezoelectric linear drives being “directly” attached to the central slider plate (figure 6, elements 200Y and 4). Examiner recognizes that Arakawa further teaches a plurality of piezoelectric linear drives being “directly” attached to the stator (figure 4, elements 200X and 3). However, Arakawa expressly teaches that the piezoelectric linear drives which are “directly” attached to the stator are only configured to move the upper slider plate in one of the two translational directions (figures 2 and 4, elements 200X, 3, and X; paragraph 61), while the piezoelectric linear drives which are “directly” attached to the central slider plate are configured to move the upper slider plate in the other of the two translational directions (figures 2 and 6, elements 200Y, 4, and Y; paragraph 63).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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