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 .
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:
“clamping mechanism” recited in claim 1
“first urging member” recited in claim 4
“second urging member” recited in claim 5
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 ‘clamping mechanism’ 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 (“mechanism”).
(B) The generic placeholder is modified by functional language (“clamping” or ‘configured for clamping’ and ‘is configured to be in a clamping state in which relative movement in the longitudinal direction between the case and the shaft member is restricted when a pressure in a pressure-acting chamber defined in the case is equal to or less than a predetermined threshold value, and is further configured to be in an unclamping state in which relative movement in the longitudinal direction between the case and the shaft member is allowed when the pressure in the pressure-acting chamber is larger than the predetermined threshold value,’ see 35 U.S.C. 112(b) indefinite rejection below).
(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 ‘clamping mechanism’ will be interpreted so as to comprise ‘a first clamping mechanism, a second clamping mechanism, and a an intermediate cylinder; wherein the first clamping mechanism comprises: a first outer cylinder in the form a first cylindrical member, the first outer cylinder being formed with a tapered surface on an inner peripheral surface on an inner peripheral surface of the first cylindrical member and decreasing in diameter toward a first direction in the longitudinal direction, a first inner cylinder in the form of a second cylindrical member, wherein a part of the second cylindrical member is inserted within the tapered surface of the first outer cylinder, a plurality of first rolling elements held in the first inner cylinder, a first urging member inserted within the inner peripheral surface of the first outer cylinder and comprising a first coil spring, and a first piston in the form a third cylindrical member and being arranged such that one end portion of the first piston in the longitudinal direction is in contact with an end portion of the first outer cylinder that faces the second direction; wherein the second clamping mechanism comprises: a second outer cylinder in the form a fourth cylindrical member, the second outer cylinder being formed with a tapered surface on an inner peripheral surface on an inner peripheral surface of the fourth cylindrical member and decreasing in diameter toward the second direction in the longitudinal direction, a second inner cylinder in the form of a fifth cylindrical member, wherein a part of the fifth cylindrical member is inserted within the tapered surface of the second outer cylinder, a plurality of second rolling elements held in the second inner cylinder, a second urging member inserted within the inner peripheral surface of the second outer cylinder and comprising a second coil spring, and a second piston in the form a fifth cylindrical member and being arranged such that one end portion of the second piston in the longitudinal direction is in contact with an end portion of the second outer cylinder that faces the second direction; and wherein the intermediate cylinder is in a form of a sixth cylindrical member and is located between the first piston and the second piston,’ as taught by the Specification (paragraphs 22 and 30 – 39), and equivalents thereof.
The limitation ‘first urging member’ 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 (“member”).
(B) The generic placeholder is modified by functional language (“urging” or ‘configured for urging’ and “configured to urge the first outer cylinder with respect to the first inner cylinder in a second direction opposite to the first direction”).
(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 ‘first urging member’ will be interpreted so as to comprise ‘a first coil spring,’ as taught by the Specification (paragraph 35), and equivalents thereof.
The limitation ‘second urging member’ 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 (“member”).
(B) The generic placeholder is modified by functional language (“urging” or ‘configured for urging’ and “configured to urge the second outer cylinder in the first direction with respect to the second inner cylinder”).
(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 ‘second urging member’ will be interpreted so as to comprise ‘a second coil spring,’ as taught by the Specification (paragraph 38), and equivalents 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 1 – 7 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 1 recites the limitation “... the form of a substantially rectangular ...” in the first paragraph of the body of the claim. The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for “the form” in the claim. Secondly, “substantially” is a term of degree which is not defined in the Specification. Therefore, the metes and bounds of the limitation are unclear. For the purposes of this Office Action, Examiner will interpret the limitation as “... a form of a rectangular ...”
Claim 1 further recites the limitation “a clamping mechanism arranged in the through hole, in such a manner that it is in a clamping state ... and that it is in an unclamping state ...” The limitation is indefinite for several reasons. First, Examiner notes that the preamble of the claim is directed towards a “clamping unit.” Therefore, it is unclear as to whether Applicant intends the limitation to positively require the ‘clamping mechanism’ be in the ‘clamping state’ and the ‘unclamping state,’ such that the claim is directed towards a ‘method of operating a clamping unit,’ or whether Applicant intends the limitation to recite functional language of the ‘clamping mechanism,’ such that the claim is directed towards the ‘clamping unit’ itself. Secondly, it is generally unclear as to which element Applicant intends “it” to refer to. For the purposes of this Office Action, Examiner will interpret the limitation as “a clamping mechanism arranged in the through hole, and configured to be in a clamping state ... and further configured to be in an unclamping state ...”
Claim 4 recites the limitation “... the form of a cylindrical member ...” in the third paragraph of the body of the claim. The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for “the form.” Secondly, it is unclear as to whether Applicant intends the limitation to refer to the ‘cylindrical member’ previously set forth in the claim, or whether Applicant intends to set forth an additional ‘cylindrical member’ which is separate and independent from the ‘cylindrical member’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “... a form of a second cylindrical member ...”
Claim 4 further recites the limitation “the cylindrical member” in the third paragraph of the body of the claim. Because the claim previously sets forth multiple ‘cylindrical members,’ it is unclear as to which ‘cylindrical member’ Applicant intends the limitation to refer to. For the purposes of this Office Action, Examiner will interpret the limitation as “the second cylindrical member.”
Claim 4 recites the limitation “... the form of a cylindrical member ...” in the last paragraph of the claim. The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for “the form.” Secondly, it is unclear as to whether Applicant intends the limitation to refer to one of the ‘cylindrical members’ previously set forth in the claim, or whether Applicant intends to set forth an additional ‘cylindrical member’ which is separate and independent from the ‘cylindrical members’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “... a form of a third cylindrical member ...”
Claim 4 further recites the limitation “the cylindrical member” in the last paragraph of the claim. Because the claim previously sets forth multiple ‘cylindrical members,’ it is unclear as to which ‘cylindrical member’ Applicant intends the limitation to refer to. For the purposes of this Office Action, Examiner will interpret the limitation as “the third cylindrical member.”
Claim 4 further recites the limitation “the second direction side” in the last paragraph of the claim. There is insufficient antecedent basis for the limitation in the claim. For the purposes of this Office Action, Examiner will interpret the limitation as “a side that faces the second direction.”
Claim 5 recites the limitation “... the form of a cylindrical member ...” in the second paragraph of the body of the claim. The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for “the form.” Secondly, it is unclear as to whether Applicant intends the limitation to refer to one of the ‘cylindrical members’ previously set forth, or whether Applicant intends to set forth an additional ‘cylindrical member’ which is separate and independent from the ‘cylindrical members’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “... a form of a fourth cylindrical member ...”
Claim 5 further recites the limitation “... the form of a cylindrical member ...” in the third paragraph of the body of the claim. The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for “the form.” Secondly, it is unclear as to whether Applicant intends the limitation to refer to one of the ‘cylindrical members’ previously set forth, or whether Applicant intends to set forth an additional ‘cylindrical member’ which is separate and independent from the ‘cylindrical members’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “... a form of a fifth cylindrical member ...”
Claim 5 further recites the limitation “the cylindrical member” in the third paragraph of the claim. Because the claim previously sets forth multiple ‘cylindrical members,’ it is unclear as to which ‘cylindrical member’ Applicant intends the limitation to refer to. For the purposes of this Office Action, Examiner will interpret the limitation as “the fifth cylindrical member.”
Claim 6 recites the limitation “... in the form of a cylindrical member ...” in the second paragraph of the body of the claim. The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for “the form.” Secondly, it is unclear as to whether Applicant intend “cylindrical member” to refer to one of the ‘cylindrical members’ previously set forth, or whether Applicant intends to set forth an additional ‘cylindrical member’ which is separate and independent from the ‘cylindrical members’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “... in a form of a sixth cylindrical member ...”
Claim 6 further recites the limitation “... the inner peripheral surface of the cylindrical member ...” The limitation is indefinite for several reasons. First, there is insufficient antecedent basis for the limitation in the claim. Secondly, because the claim previously sets forth multiple ‘cylindrical members,’ it is unclear as to which ‘cylindrical member’ Applicant intends the limitation to refer to. For the purposes of this Office Action, Examiner will interpret the limitation as “...an inner peripheral surface of the sixth cylindrical member ...”
Allowable Subject Matter
Claims 1 - 7 would be allowable if rewritten or amended 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.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 1 and 7, Koczera (U.S. Patent Application Publication Number 2012/0061896) teaches a clamping unit (abstract) comprising: a case in a form of a rectangular member having a through hole that passes therethrough in a longitudinal direction thereof (figures 1 and 4, elements 110 and 120 being the ‘case’; paragraph 19), with a shaft member being inserted into the through hole (figure 4, element 140 being the ‘shaft member’; paragraph 20); a clamping mechanism arranged in the through hole, and configured to be in a clamping stated in which relative movement in the longitudinal direction between the case and the shaft member is restricted, and is further configured to be in an unclamping state in which relative movement in the longitudinal direction between the case and the shaft member is allowed (figures 3 and 4, elements 150 and 160 being the ‘clamping mechanism’; paragraphs 20 – 23), wherein the clamping mechanism comprises a first clamping mechanism and a second clamping mechanism (figures 3 and 4, element 150 being the ‘first clamping mechanism’ and element 160 being the ‘second clamping mechanism’; paragraphs 20 – 23).
However, Koczera does not teach the first clamping mechanism comprising: a first outer cylinder in the form a first cylindrical member, the first outer cylinder being formed with a tapered surface on an inner peripheral surface on an inner peripheral surface of the first cylindrical member and decreasing in diameter toward a first direction in the longitudinal direction, a first inner cylinder in the form of a second cylindrical member, wherein a part of the second cylindrical member is inserted within the tapered surface of the first outer cylinder, a plurality of first rolling elements held in the first inner cylinder, a first urging member inserted within the inner peripheral surface of the first outer cylinder and comprising a first coil spring, and a first piston in the form a third cylindrical member and being arranged such that one end portion of the first piston in the longitudinal direction is in contact with an end portion of the first outer cylinder that faces the second direction; and the second clamping mechanism comprising: a second outer cylinder in the form a fourth cylindrical member, the second outer cylinder being formed with a tapered surface on an inner peripheral surface on an inner peripheral surface of the fourth cylindrical member and decreasing in diameter toward the second direction in the longitudinal direction, a second inner cylinder in the form of a fifth cylindrical member, wherein a part of the fifth cylindrical member is inserted within the tapered surface of the second outer cylinder, a plurality of second rolling elements held in the second inner cylinder, a second urging member inserted within the inner peripheral surface of the second outer cylinder and comprising a second coil spring, and a second piston in the form a fifth cylindrical member and being arranged such that one end portion of the second piston in the longitudinal direction is in contact with an end portion of the second outer cylinder that faces the second direction, or equivalents to the first and second clamping mechanisms thereof, as required by the claims.
Conclusion
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726