DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 4, 2026 has been entered.
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:
“first member” recited in claim 1
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 “first member” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim 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 (“configured to detachably secure a current collector brush ...”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Examiner recognizes that the claim recites the ‘first member’ as having ‘back-side surface.’ However, this recitation of a ‘surface’ is insufficient structure for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “first member” will be interpreted so as to comprise ‘a first shaft and a second shaft, wherein each of the first and second shaft comprise a bearing surface and one or more screw holes,’ as taught by the Specification (paragraphs 19 – 20), or an equivalent 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 and 2 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 power supply cable extends, from a vicinity of the predetermined position ...” in the last paragraph. Because “vicinity” is a term of degree which is not defined in the Specification, the metes and bounds of the limitation are unclear.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Nakano (U.S. Patent Application Publication Number 2011/0108305) in view of Nagai (U.S. Patent Application Number 2011/0163490, cited in IDS).
As to claim 1, Nakano teaches a positioner (abstract) comprising: a first member (figure 2, the housing being the ‘first member,’ see below; paragraph 63).
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Nakano further teaches a rotating table supported so as to rotate about a prescribed axis relative to the first member (figure 2, element 12 being the ‘rotating table’; paragraph 64); a motor that is disposed so as to be parallel to and offset from the prescribed axis, the motor being configured to rotationally drive the rotating table (figure 2, element 8 being the ‘motor’; paragraph 59); a reducer being configured to reduce a rotation of the motor and transmit the reduced rotation to the rotating table (figure 2, elements 6 and 7 being the ‘reducer’; paragraph 59); a power supply cable (figure 2, element 201 being the ‘power supply cable’; paragraphs 63 – 64); and a hollow section that passes through the first member, the rotating table, and the reducer in a direction following the prescribed axis within regions that include the prescribed axis to open to a back-side surface which is a surface of the first member on a side opposite from the rotating table (figure 2, see below).
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Nakano further teaches that the rotating table is configured to detachably secure one end of the power supply cable (figure 2, elements 201 and 12). Examiner notes that this can be found because the power supply cable is configured such that it may be wrapped or tied around radial ends of the rotating table, such that the power supply cable is ‘detachable secured’ to the rotating table. Nakano further taches that the first member comprises a bearing surface that is configured to detachably secure a current collector brush at a predetermined position radially outside the hollow section on the back-side surface, the one end of the power supply cable being attachable to and detachable from the current collector brush (figure 2, the ‘back-side surface’ being the ‘bearing surface’ and ‘prescribed position,’ see above). Examiner notes that the claim merely requires that the first member be configured to allow for attachment of a ‘current collector brush.’ The claims do not require the positioner to comprise the ‘current collector brush.’
Nakano further teaches that the power supply cable has a portion having a U-shape after the power supply cable extends, from a vicinity of the predetermined position in a direction away from the rotating table so that, in a case in which the current collector brush is not attached to the first member, the one end of the power supply cable passes through the hollow section along the prescribed axis to be detachably secured to the rotating table (figure 2, elements 201, 2, and 12, see below).
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However, Nakano does not teach the reducer being disposed between the first member and the rotating table. Nagai teaches a positioner (abstract) comprising: a first member (figures 1 and 2, element 20 being the ‘first member,’ paragraph 35); a rotating table supported so as to rotate about a prescribed axis relative to the first member (figures 1 and 2, element 4 being the ‘rotating table’; paragraph 35); a motor that is disposed so as to be parallel to and offset from the axis and is configured to rotationally drive the rotating table (figure 2, element 8 being the ‘motor’; paragraph 36); and a reducer configured to reduce a rotation of the motor and transmit the reduced rotation to the rotating table (figure 2, elements 6 and 7 being the ‘reducer’; paragraph 36). Nagai further teaches that the reducer is disposed between the first member and the rotating table (figure 2, elements 6, 20, and 4). It would have been obvious to one skilled in the art to substitute the reducer of Nagai, which is disposed between the first member and the rotating table, for the reducer of Nakano, which is disposed away from each of the first member and the rotating table, because one skilled in the art would have appreciated that either reducer would provide the same benefit of reducing a rotation of the motor, as desired by Nakano (paragraph 59).
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Nakano in view of Nagai as applied to claim 1 above, and further in view of Lee (German Patent Number DE 10 2016 226319 A1).
As to claim 2, As to claim 2, Nakano does not teach a base or the first member comprising a shaft part. Lee teaches a positioner (machine translation, paragraph 1) comprising: a first member (figure 3, element 110 being the ‘first member,’ machine translation, paragraph 30); a rotating table supported so as to rotate about a prescribed axis relative to the first member (figure 3, element 130 being the ‘rotating table’; machine translation, paragraphs 30 and 33); a motor that is disposed so as to be parallel to and offset from the prescribed axis, the motor being configured to rotationally drive the rotating table (figure 4, element 111 being the ‘motor’; machine translation, paragraph 41); and a reducer being configured to reduce a rotation of the motor and transmit the reduced rotation to the rotating table (figure 4, elements 112 and 113 being the ‘reducer’; machine translation, paragraph 41). Lee further teaches a base that is installed on a horizontal installation face (machine translation, paragraph 34, wherein the ‘machining center’ is the ‘base’), wherein the first member includes a shaft part that is supported so as to be rotatable about a horizontal first axis orthogonal to the prescribed axis relative to the base (figure 3, element 120 being the ‘shaft part’; machine translation, paragraphs 30 and 32), and also includes a hollow path that extends along the first axis from an end portion of the shaft part, in a region including the first axis, and that opens to the surface (figure 3, element 120). It would have been obvious to one skilled in the art to substitute the first member of Lee, which comprises a shaft part rotatable about a horizontal first axis, for the first member of Nakano, because Lee teaches that such a first member provides a benefit of allowing the positioner to rotate about the horizontal first axis (machine translation, paragraph 32), which one skilled in the art would appreciate as providing a benefit of allowing additional access to the given workpiece, as desired by Nakano (paragraphs 1 and 9).
Response to Arguments
Applicant's arguments filed May 4, 2026 have been fully considered but they are not persuasive.
Applicant argues, on pages 5 – 6, that Nakano does not teach ‘the first member being configured to detachably secure a current collector brush at a predetermined position radially outside the hollow section on the back-side surface’ as recited by claim 1. Examiner disagrees. As explained above, Examiner notes that ‘first member’ is being interpreted under 35 U.S.C. 112(f). Therefore, because the ‘first member’ of Nakano comprises a ‘bearing surface’ which is located at ‘a predetermined position radially outside the hollow section on the back-side surface,’ the ‘bearing surface’ of the ‘first member’ of Nakano is ‘configured to detachably secure a current collector brush’ (figure 2, see below).
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Applicant further generally argues, on page 6, that Nakano does not teach a ‘power supply cable extends, from a vicinity of the predetermined position in a direction away from the rotating table so that, in a case in which the current collector brush is not attached to the first member, the one end of the power supply cable passes through the hollow section along the prescribed axis to be detachably secured to the rotating table’ as recited by claim 1. Examiner again disagrees and refers to figure 2 below.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yoshida (U.S. Patent Application Publication Number 2012/0266783) teaches a positioner comprising: a first member; a rotating table; a motor; a reducer; a power supply cable; and a hollow section.
Kato (U.S. Patent Application Publication Number 2002/0170188) teaches a positioner comprising: a first member; a rotating table; a motor; a reducer; and a hollow section.
Sterenberg (U.S. Patent Number 5,201,249) teaches a positioner comprising: a first member; a rotating table; a motor; a reducer; and a hollow section.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
