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
Applicant's election with traverse of Claims 1-13 in the reply filed on 2/13/26 is acknowledged. The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because the cited prior art did not disclose all the features of the withdrawn claims.
The requirement is still deemed proper and is therefore made FINAL.
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 7 and 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 7 recites “said shape setting layer.” There is insufficient antecedent basis for this limitation in the claim. It is assumed this was intended to depend on claim 6.
Claim 13 recites “connecting end portion.” There is insufficient antecedent basis for this limitation in the claim. It is assumed this was supposed to read “connecting end section.”
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.
Claim(s) 1, 2, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rossner et al. [US 7874686 B2, hereinafter “Rossner.”]
Re. claim 1, Rossner discloses a positioning marker ball [1, Fig. 2B] adapted for an optical positioning system [Col. 1 lines 10-20] comprising:
a main body unit including a ball body [2], and
a rod portion [5] that extends outwardly from said ball body [Fig. 2b], and that has a connecting end section disposed opposite said ball body and adapted to connect a mount [5a, Fig. 4], and
an optical unit [3 and 4] disposed on said ball body, and including a reflective layer [4] that is disposed on the ball body [“reflective adhesive surface 4,” Col. 7 lines 53-54], and that reflects light [Col. 5 lines 40-50].
Regarding the ball body being molded integrally with the rod portion: Regarding the molding, this relates to the method of manufacturing the device and does not distinguish the final product over that of Rossner. Regarding the ball body being integral with the rod portion: it is not clear in Fig. 2B whether or not the rod is integral with the ball. However, forming the two to be integral would have been obvious to one of ordinary skill in the art before the effective filing date of the invention because this is a matter of obvious engineering choice which does not affect the function of the device in a non-obvious way. See MPEP 2144.04.V.B.
Re. claim 2, Rossner discloses said optical unit further includes an optical layer [3] that is disposed on an outer surface of said ball body [Fig. 2B], and that has a plurality of optical elements that allow passage of light therethrough [refractive pellets, Col 7 lines 52-53].
Re. claim 8, Rossner discloses said optical elements are transparent beads [Col. 7 lines 39 and 53].
Claim(s) 3-4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rossner in view of Wang et al. [CN 201067403 Y, hereinafter “Wang,” cited on Applicant’s IDS]
Re. claim 3, Rossner discloses the device as set forth with respect to claim 1 above, but fails to teach the main body made entirely of aluminum/aluminum alloy, however Wang teaches a positioning marker ball wherein said main body unit is entirely made of aluminum or an aluminum alloy [aluminum alloy, Page 3, 3rd and 4th paragraphs of attached English translation]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Rossner by forming the main body entirely of an aluminum alloy as taught by Wang in order to “ensure the size stability and precision assembly of the locator after aging process, eliminating the inner stress to avoid deformation after processing” [Wang, translation Page 3, 4th paragraph].
Re. claim 4, Rossner discloses the device as set forth with respect to claim 1 above, wherein said ball body is made of plastic [Col. 5 lines 60-63], and said rod portion further has an interconnecting section that is opposite to said connecting end section and that interconnects with said ball body [Fig. 2B, the portion of the rod which connects to the ball], but fails to teach the material of the rod. However, Wang teaches the rod portion is made of metal [“stainless steel connecting screw 2,” Page 3]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Rossner by forming the rod of metal because this amounts to a simple substitution of one material type known in the art for another. The modified Rossner discloses the parts being integral as set forth with respect to claim 1 above. Regarding the use of insert molding, this relates to the method of making the product and does not give further patentable weight.
Re. claim 13, Rossner discloses a positioning device [Fig. 5] adapted for an optical positioning and tracking system [Col. 1 lines 10-20] comprising:
a mount [5a],
a plurality of positioning marker balls [1, Fig. 5] each of which is said positioning marker balls as claimed in claim 1,
wherein said connecting end portion [section] of each of said positioning marker balls is coupled with said mount [Fig. 5].
Rossner is silent re. the threaded holes. However, Wang teaches the mount including a plurality of threaded holes [see Figs. 1-2. Fig 2 shows the rod having a threaded male end, and Fig. 1 shows this end connecting to a respective hole in the mount], and said connecting end portion of each of said positioning marker balls is coupled with one of said threaded holes of the mount [Fig. 1]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Rossner such that the mount includes a plurality of threaded holes into which the connecting end section is inserted as taught by Wang because this amounts to a simple substitution of one connection type known in the art for another with predictable results.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rossner in view of Wang, as applied to claim 4, and further in view of Huldin et al. [US 2016/0306083 A1, hereinafter “Huldin”].
Re. claim 5, the modified Rossner discloses the apparatus set forth above, but is silent regarding the tubular sleeve portion. However, Huldin teaches, in a positioning marker ball, said ball body has a tubular sleeve portion [136, Fig. 1] projecting outwardly from an outer surface of said ball body and being in line with an axial line of said ball body [Fig. 1], said interconnecting section of said rod portion being embedded in said tubular sleeve portion [Fig. 7]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of the modified Rossner to add, to the positioning marker ball, a tubular sleeve portion to which the interconnecting section of the rod portion is embedded because this amounts to a simple substitution of one connection type known in the art for another with predictable results.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rossner in view of Huldin.
Re. claim 9, the modified Rossner discloses the apparatus set forth above, including the outer layer being adhesively bonded to the ball body [Col. 7 line 44-50] but is silent regarding the reflective shells. However, Huldin teaches, in a positioning marker ball, an optical unit further includes a first reflective shell [114, Figs 1-3, Par. 0081] covering a first portion of said an outer surface of said ball body, and a second reflective shell [116] covering a remaining second portion of said ball body, said first and second reflective shells being convex and complementarily forming a ball-shaped shell [Fig. 2], each of said first and second reflective shells having said reflective layer that is disposed on said ball body [Par. 0081]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of the modified Rossner to include a first and second reflective shell as taught by Huldin in order to allow the piece to be rapidly deployed [Par. 0084.
Regarding the first and second reflective shells being adhesively bonded to the ball body, given the above teachings, one of ordinary skill would reasonably be apprised of the benefits of the claimed invention.
Re. claim 10, Huldin further teaches said ball body has an equatorial line dividing said outer surface of said ball body into said first portion and said remaining second portion [Fig. 1-2], and two depressions which sink inwardly from said outer surface of said ball body and are respectively formed in said first portion and said remaining second portion. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of the modified Rossner by forming depressions on the first and second body portions as taught by Huldin in order to improve the trackability of the marker [see e.g. Gullotti et al., US 2019/0209080 A1].
Re. claim 11, the modified Rossner discloses the apparatus set forth above, including the outer shell having an optical layer [3] that is laminated with said reflective layer [4] and has a plurality of optical transparent elements [Col. 7 lines 39 and 53] said reflective layer being disposed between said optical layer and said ball body [Fig. 2b]. As set forth above, Huldin teaches the two shells. Thus, the combined Rossner-Huldin reasonably conveys to one of ordinary skill the benefits of the claimed invention.
Allowable Subject Matter
Claims 6 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art of record fails to teach or suggest a shape setting layer disposed between the optical/reflective layer and ball body, in combination with the other claim elements. (Note that if claim 7 would be allowable if rewritten to depend on claim 6).
Conclusion
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/ERIN MCGRATH/ Primary Examiner, Art Unit 3771