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(b)
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.
Claims 2-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites “the moment which is applied to the second member from the second end of the cam part”, which is unclear. The previous recitation of “a… moment which is applied to the second member” (last line of claim 1) does not specify that the moment was “from the second end of the cam part” (claim 2) such that the latter claim 2 recitation lacks full/clear/proper antecedent basis from claim 1. See MPEP 2173.05(e) which states “A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made… even though indefiniteness in claim language is of semantic origin, it is not rendered unobjectionable simply because it could have been corrected. In re Hammack, 427 F.2d 1384, 1388 n.5, 166 USPQ 209, 213 n.5 (CCPA 1970)”. The examiner suggests overcoming this rejection by one of the two following remedies:
If the claim 1 and claim 2 moment recitations are to refer to a common/same/single moment then the claim 1 moment should be amended to carry the full claim 2 phraseology so as not to be confused with an additional/different moment;
On the other hand, if the claim 1 and claim 2 moment recitations are to set forth distinct/different moments then the two moments should be given distinct labels (e.g., first moment, second moment).
Claims 3-9 depend from claim 2 and are thus similarly unclear/rejected.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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.
Claims 1, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nagaya JP2019073086.
The prior art structures bolded in the mapping of claims below are presumed to be inherently capable of performing the claimed functions/properties italicized below in accordance with MPEP §2112.01(I) and MPEP §2114, which states that where the prior art structure is substantially identical to the claimed structure, the PTO may presume claimed functions/properties to be inherently capable thereto, thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
Claim 1. An operation device for receiving an operation carried out by an operator in order to move an operation target, said operation device comprising: an operation section (top of 7 supporting and/or including 701) that is capable of being subjected to one or both of a tilting operation and a rotating operation; a first member (bottom of 7) that is mechanically connected to the operation section that is displaceable in accordance with an amount of one or both of the tilting operation and the rotating operation by the operation section; a second member (portion of 28 receiving/limiting rotation of 7) adapted to stop the first member at a predetermined stop position; and a force sensor (8, which is disclosed to be a “six-axis sensor” portion of 28, thereby meeting the same disclosed, albeit unclaimed, structural detail of applicant’s force sensor, see copy of the English translation of JP086’ attached to this Office Action) adapted to detect, while the second member is stopping the first member, a force or moment which is applied to the second member. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the JP086’ prior art to maximize the full utility of its six-axis force sensor to measure all forces and all moments capable of being measurable thereby, for the benefit of increasing utility.
Claim 8. The operation device according to claim 1, wherein the operation section is an L-shaped or T-shaped handle (in that the top of 7 supporting and/or including 701 extends outward left/right above 7).
Claim 9. A carriage comprising: an operation device recited in claim 1; a mounting base (4, 9); a traveling section (3) that includes a driving section (13 and/or 5) and that travels by a driving force supplied from the driving section; and a control device (9) that includes at least one processor (9 and/or “computer etc.”, see copy of English translation attached to this Office Action).
Allowable Subject Matter
Claims 2-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action (see suggested remedy in the 35 U.S.C. 112 rejection above) and to include all of the limitations of the base claim and any intervening claims. While components recited in these claims are known generally throughout separate references (for example see the rack and pinion elements in references Onodera US 20050126326, Rice US 10113636, Savard US 4527652 and Arpino US8327961) the totality of limitations set forth in these claims is not anticipated by any one prior art reference of record. The prior art does not provide any teaching, suggestion or motivation to modify toward the entirety of applicant's claim, nor was there any readily apparent cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the time the invention was made to modify the prior art to obtain the entirety of applicant’s claimed invention.
Response to Arguments
The examiner notes, and appreciates, applicant’s acknowledgement that the prior art rejection previously set forth in the prior Office Action was that of 35 U.S.C. 102 anticipation by JP 2019-73086 despite being mistyped by the examiner as JP 2017-73086. The new grounds above, necessitated by amendment, maintain the same JP 2019-73086 reference, albeit under 35 U.S.C. 102 or 103 in the alternative.
Applicant's arguments regarding how the amendments have clarified the claims overcoming the 35 USC 112 rejections are persuasive, with the exception of the rejection related to claim 2, as maintained and reworded to further explain elsewhere above.
Applicant’s argument that the claims are allowable over the prior art are not persuasive. The claims are suggested by the prior art in the manner detailed in the new grounds set forth above, which were necessitated by applicant’s clarifying amendments.
More particularly, applicant’s arguments regarding “hardly moves” and “difficult for the operator to obtain a real feeling operation” are not pertinent to the claims as actually written since no limitation is set forth in applicant’s claims requiring any movement in excess of “hardly” nor any specific ease of “feeling”. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s assertion that prior art element 701 cannot be functionally subjected to tilting is without merit since 701 is fixed to the top of lever 7 and thus inherently can tilt/move therewith. Applicant’s burden to overcome an examiner’s presumption of inherency for a function in a product claim where the prior art suggests all claimed structure is to obtain/test the prior art structure and submit evidence proving the contrary in accordance with MPEP 2112.01 and 2114. Note the following MPEP sections and case law regarding inherency of functions in product claims:
MPEP §2112.01 (I) states “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent… [and] a prima facie case of either anticipation or obviousness has been established… the applicant has the burden of showing that they are not…” (emphasis added).
MPEP §2112 (V) states “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].’ The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
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MPEP §2112 (IV) further states “In In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. The examiner had asserted inherency based on the structural similarity between the patented spout and applicant’s disclosed top, i.e., both structures had the same general shape. The court stated: [N]othing in Schreiber’s [applicant’s] claim suggests that Schreiber’s container is of a ‘different shape’ than Harz’s [patent]. In fact, [ ] an embodiment according to Harz (Fig. 5) and the embodiment depicted in Fig. 1 of Schreiber’s application have the same general shape. For that reason, the examiner was justified in concluding that the opening of a conically shaped top as disclosed by Harz is inherently of a size sufficient to ‘allow [ ] several kernels of popped popcorn to pass through at the same time’ and that the taper of Harz’s conically shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted to the container.’ The examiner therefore correctly found that Harz established a prima facie case of anticipation. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.”
MPEP §2114(I) states “Apparatus claims must be structurally distinguishable from the prior art… While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).”
MPEP §2114(II) states “[the] Manner of operating the device does not differentiate apparatus claim from the prior art… A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.)” (emphasis in original).
In In re Best the court relied upon In re Ludke and In re Brown to explain that “Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludke, supra. Whether the rejection is based on 'Inherency' under 35 USC 102, on 'prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972)" (emphasis added) In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977);
In re Schreiber found that "choosing to define an element functionally, i.e., by what it does, carries with it a risk... [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) See In Re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
In re Schreiber held that “Apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78 44 USPQ2d 1429, 1431-32 (Fed.Cir.1997).
In re Swinehart and In re Ludtke held that “[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) In re Swinehart, 58 CCPA --, --F.2d --, 169 USPQ 226 (1971), and In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971).
In re Brown held that “[I]t is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (emphasis added) In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
In re King held that "Contrary to appellant's reasoning, after the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to prove that the subject matter shown to be in the prior art does not posses the characteristic relied on… Here, appellant’s burden before the board was to prove that Donley’s structure does not perform the so-called method defined in the claims when placed in ambient light. Appellant did not satisfy that burden, it did not suffice merely to assert that Donley does not inherently achieve enhanced color through interference effects, challenging the PTO to prove the contrary by experiment or otherwise. The PTO is not equipped to perform such tasks.” In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
In re Spada held that “Spada was reasonably required to show that his polymer compositions are different from those described by Smith. This burden was not met by simply including the assertedly different properties in the claims. When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
See Hewlett-Packard Co. v. Bausch & Long Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) held that “Apparatus claims cover what a device is, not what a device does.”
Conclusion
Applicant's amendment necessitated the new grounds 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618