DETAILED ACTION
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive.
The applicant argues that the prior art does not teach the newly added claim limitations. While the examiner agrees that the prior art does not discuss the new claim limitations, it is not clear that newly claimed functionality is capable of being produced by the claimed device. Specifically, it is not clear how rotating the second magnet can adjust a counterbalance force between the first magnet and the first ferromagnetic tube since the second magnet has its own tube that shields its field from the first ferromagnetic tube, and also since the first and second magnets are physically connected together in the disclosed device, and thus cannot produce a counterbalance force on each other.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11852212. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claimed subject matter is substantially the same.
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.
Claim 2-3, 5-7, 10-16, and 18-21 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.
In re claims 2, 11, and 19, it is not clear how a counterbalance force between the first magnet and the first ferromagnetic tube can be adjusted by rotation of the second magnet, or rotation of the first magnet relative to the second magnet. The two magnets are disclosed to be positioned in separate ferromagnetic tubes that inherently block external magnetic fields (including field from another adjacent magnet), and thus can only interact with the tube they are positioned in. Specifically, the claimed structure appears to only be capable of functionality of first magnet interacting with first ferromagnetic tube without being influenced by the second magnet.
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) 2-3, 5-7, 10-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manakame et al. (US 9016446) in view of McCarthy et al. (US 2018/0241328, provided in the IDS).
In re claim 2, Manakame, in figures 1-7, discloses an adjustable magnetic spring counterbalance assembly comprising: a first ferromagnetic tube (101, 601); a first magnet (111) disposed in the first ferromagnetic tube and configured to be axially movable and rotatable with respect to the first ferromagnetic tube. Manakame does not teach a second magnet. McCarthy however, teaches a similar device having two magnets (122) and ferromagnetic tubes (120, these tubes are ferromagnetic to provide force to the magnets, see figures 1-3 for best view). Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have duplicated the device of Manakame into two structures as taught by McCarty in order to provide improved redundancy and allow for higher counterbalance force when adapted to a device as shown by McCarthy.
In re claim 3, Manakame, in figures 1-7, discloses a cylindrical magnet (as shown in the figures).
In re claim 5, Manakame in view of McCarthy, discloses a second ferromagnetic tube positioned parallel to the first ferromagnetic tube, the second magnet disposed in the second ferromagnetic tube (parallel tubes are shown by McCarthy).
In re claim 6, Manakame in view of McCarthy, discloses that the first and second magnets are coupled to a first component (Device shown by McCarthy shows that dual tubes and magnets can be coupled to one component) of a linear motion system.
In re claim 7, Manakame in view of McCarthy, discloses that the first ferromagnetic tube is coupled to a second component of a linear motion system that moves relative to the first component (as shown in figure 1 by McCarthy).
In re claim 10, Manakame in view of McCarthy, discloses magnets that are configured to rotate but does not teach a third magnet/tube. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a third magnet/tube structure next to the first and the second magnet structures, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations. In fact, other species show similar structures without the third magnet/tube structures capable of similar functionality as the claimed structure.
In re claim 11, Manakame, in figures 1-7, discloses a magnetic counterbalance assembly comprising: a first ferromagnetic tube (101, 601); a first magnet (111) disposed in the first ferromagnetic tube and configured to be axially and rotatably movable with respect to the ferromagnetic tube. Manakame does not teach a second magnet. McCarthy however, teaches a similar device having two magnets (122) and ferromagnetic tubes (120, these tubes are ferromagnetic to provide force to the magnets, see figures 1-3 for best view). Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have duplicated the device of Manakame into two structures as taught by McCarty in order to provide improved redundancy and allow for higher counterbalance force when adapted to a device as shown by McCarthy.
In re claim 12, Manakame in view of McCarthy, discloses magnets that are configured to be axially movable but does not teach a third magnet/tube. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a third magnet/tube structure next to the first and the second tubes, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations. In fact, other species show similar structures without the third magnet/tube structures capable of similar functionality as the claimed structure.
In re claim 13, Manakame in view of McCarthy, discloses that a first pole of the second magnet is adjacent to the first magnet, and a second pole of the second magnet is adjacent to the third magnet to generate a first counterbalance force (all magnets including all poles are adjacent to each other within the device).
In re claim 14, Manakame in view of McCarthy, discloses that the second magnet is rotatable 90 degrees to generate a second counterbalance force greater than the first counterbalance force (90 degree rotation developing different forces is shown by Manakame in figures 6a-b).
In re claim 15, Manakame in view of McCarthy, discloses that the second magnet is rotatable 180 degrees to generate a third counterbalance force greater than the second counterbalance force (the second magnet is inherently rotatable to any position; the force is greater because at 180° the curve is opposite of the first force that is shown and thus has higher value at least in some portions of the curve).
In re claim 16, Manakame in view of McCarthy, discloses a counterbalance bracket (as shown by McCarthy, see figure 1), wherein the first, second, and third magnets are disposed in the counterbalance bracket (in the modified device).
In re claim 18, Manakame in view of McCarthy, discloses that the counterbalance magnet assembly is component of a degree of freedom motion (DOF) stage (the shown device), and the first and second ferromagnetic tubes extend through a table (104) configured to a base of the DOF stage, and the first and second magnets are disposed in a counterbalance bracket configured to the base (as seen in figure 1 of McCarthy).
Claim(s) 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCarthy et al. (US 2018/0241328, provided in the IDS) in view of Manakame et al. (US 9016446).
In re claim 19, McCarthy discloses a counterbalance magnet assembly of a degree of freedom motion (DOF) stage, the counterbalance magnet assembly comprising: a first and second ferromagnetic tubes (120); a first and second magnets (122) disposed in the first ferromagnetic tube configured to be axially movable with respect to the ferromagnetic tube. McCarthy does not disclose adjustability of the counterbalance force. Manakame however teaches a ferromagnetic tube (101, 601) and a magnet (111) disposed in the first ferromagnetic tube and configured to be axially and rotatably movable with respect to the ferromagnetic tube to adjust the force. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have adapted the magnet structure as taught by Manakame to the device of McCarthy to provide a variable counterbalance force.
In re claim 20, McCarthy discloses that the counterbalance magnet assembly is component of a degree of freedom motion (DOF) stage, and the first ferromagnetic tube extends through a table (104) configured to a base of the DOF stage, and the first magnet is disposed in a counterbalance bracket configured to the base (as seen in figures of McCarthy).
In re claim 21, Manakame in view of McCarthy, discloses magnets that are configured to be axially movable but does not teach a third magnet/tube. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a third magnet/tube structure next to the first and the second tubes, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Please note that in the instant application, applicant has not disclosed any criticality for the claimed limitations. In fact, other species show similar structures without the third magnet/tube structures capable of similar functionality as the claimed structure.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 02/19/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 Alexander Talpalatski whose telephone number is (571)270-3908. The examiner can normally be reached 10 AM - 6 PM PT.
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, Shawki Ismail can be reached at 5712723985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexander Talpalatski/Primary Examiner, Art Unit 2837