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 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.
Claims 1, 5, 8-9, and 11-12 are rejected under 35 U.S.C. 112(a) 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. The claims contain new matter.
Regarding independent claim 1, the newly amended limitation “in response to an operation by a first user to set a holding position of the holdable object, displaying a calibration object, wherein the calibration object is configured to calibrate the holding position of the holdable object, and wherein the holding position comprises one of a plurality of positions associated with the holdable object” [emphasis added] is not fully supported by the original specification. At best, paragraph [79] of the specification as filed states that “when it is determined that the first user operates an operable control for the first user to set the current object as the holdable object, display of the calibration object is triggered” [emphasis added]. The first user operating an operable control for the first user to set the current object as the holdable object is not the same as an operation by a first user to set a holding position of the holdable object. Therefore, the newly amended limitation is not sufficiently described by the original specification and contains new matter. Claims 5, 8, and 9 depend from claim 1 and share the rejection.
Regarding independent claims 11 and 12, each contain newly amended limitations substantially identical to the newly amended limitation of claim 1, and are therefore likewise rejected for the reasons stated regarding claim 1.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because of the new ground of rejection under 35 USC 112(a) for new matter.
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 GENE W LEE whose telephone number is (571)270-7148. The examiner can normally be reached M-F 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Eason can be reached at 571-270-7230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gene W Lee/Primary Examiner, Art Unit 2624
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