DETAILED ACTION
Claims 1-20 are currently presented for examination.
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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The examiner notes multiple references to internet sites are presented at least in paragraphs [0003], and [0050] of the Specification as filed, however none of the cited web pages have been cited on the IDS nor have copies of the pages been provided. At least one United States Patent Application Publication is cited in paragraph [0051] and paragraph [0069], and at least one WIPO publication has been identified in paragraph [0071], however those documents do not appear to be cited on the IDS.
Specification
The disclosure is objected to because of the following informalities: Paragraphs [0014], [0017], [0025], and [0035]-[0037] collectively refer to a plurality of Figures within the Brief Description of the Drawings. The examiner strongly recommends identifying each individual figure in its own paragraph with a brief description to reduce the opportunity for confusion.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 2-20 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 2 recites “the plate thickness is less than 10 mm, 8 mm, 6 mm, 5 mm, or 4 mm across 50%, 60%, 70%, 80%, 90% or more of the top planar surface area” at lines 1-3. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “less than 10 mm” and the claim also recites 8 mm, 6 mm, 5 mm, or 4 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2 recites “the plate thickness is less than 10 mm, 8 mm, 6 mm, 5 mm, or 4 mm across 50%, 60%, 70%, 80%, 90% or more of the top planar surface area” at lines 1-3. It is unclear whether the dimensions identified are matched pairs, such that “less than 10 mm” corresponds to “50%” or whether the different values can be selected independent of one another. A review of the Specification as filed is not instructive.
Claims 3-20 each depend from claim 2, and therefore are rejected for at least the reasons presented above with respect to claim 2.
Claim 7 recites “wherein the plate comprises a clamp mechanical interface, the clamp mechanical interface permits a clamp to removably couple to the plate” at lines 1-2. It is unclear whether the clamp is part of the jig of claim 1. The examiner notes that claim 9, which depends from claim 7, further describes behavior of the clamp, however it is not clear that the clamp is part of the device. As best understood, these limitations recite intended use, and the clamp is not positively required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites the broad recitation “larger than 300 mm”, and the claim also recites “350 mm, 400 mm, 450 mm, or 500 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites the broad recitation “larger than 200 mm”, and the claim also recites “250 mm, 300 mm, 350 mm, 400 mm, 450 mm, or 500 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “larger than 50 mm”, and the claim also recites “100 mm, 150 mm, or 200 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. These limitations are presented both with respect to a first direction and a second direction, and both create at least opportunities for confusion in interpretation.
Claim 18 recites “a marker ID” at line 2. The term “ID” may be an acronym or initialism; however the term is not presented with the full meaning of the term within the claims the first time the term is introduced. The examiner notes that “ID” may mean, for example, internal diameter, identification, or inside dimension, among other phrases or terms. Applicant is strongly encouraged to define any initialism or acronyms in the claims before using said initialisms.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 20 recites the broad recitation “does not protrude more than 20 mm”, and the claim also recites “15 mm, 10 mm, 8 mm, 6 mm, 5 mm, or 4 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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.
Claim 1
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent 4,474,514 to Jensen (hereinafter “Jensen”).
Regarding claim 1, Jensen discloses a jig (see Fig. 1) for providing a position reference for an image-based positioning system (includes visible indicia 66; see Fig. 9), the jig comprising: a plate (10), wherein the plate comprises a region (at least through holes in bushings 24 at upper or lowermost surfaces of body 10) to provide access to a workpiece (W; see Fig. 2) during use, at least a first portion of the plate (lowermost surface of body 10; see Fig. 2) rests on the workpiece (W) during use, the plate comprises one or more features (28; select leftmost member 28 in Fig. 1) on a second portion of the plate (see Fig. 1), each feature of the one or more features having an attribute (physical geometry is visible, and guide plates translate within grooves ) to permit identification of the corresponding feature relative to the other features (each guide plate is located rigidly relative to other components of the device 10), the plate (10) comprises a first element (34) to permit alignment of the plate relative to a first plane (see Fig. 1; leftmost vertical plane can be identified with respect to planar surface of guide plate 34) associated with an edge of the workpiece (W; see Fig. 2), the first element has a thickness (see Fig. 1), in a first state of the first element (see Col. 4, lines 8-15), that is less than or equal to a thickness of the plate (10), and the plate (10) comprises a second element (28) to permit alignment (see Col. 3, lines 48-68) of the plate relative to a second plane (plane coplanar with surface of member 28, see Fig. 2) associated with a second edge of the workpiece (W) when used in combination with the first element (34), the second plane (plane aligned with surface of member 28 in Fig. 2) is not parallel to the first plane (see Fig. 2; planes would be perpendicular), the second element has a thickness, in a first state of the second element, that is less than or equal to the plate thickness (see Fig. 2; thickness in vertical direction appears to be equal to plate thickness in vertical direction, and plate thickness is greater than thickness of member 28 direction orthogonal to planar front surface of member 28).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-4, 6-10, and 14-20
Claims 2-4, 6-10, and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jensen as applied to claim 1 above.
Regarding claim 2, Jensen discloses the limitations of claim 1, and further Jensen discloses that the plate (10) has a top planar surface area (top surface of body 10 including bushings 24). However, Jensen does not explicitly disclose that the plate thickness is less than 10 mm, 8 mm, 6 m, 5 mm, or 4 mm across 50%, 60%, 70%, 80^, or 90% or more of the top planar surface area.
However, the MPEP instructs that “where the only difference between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” There is nothing of record that suggests that the recited dimensions would cause the device of Jensen to perform differently in use, such that one having ordinary skill in the art would at least reasonably expect that the jig disclosed by Jensen would behave in the same manner as the claimed apparatus recited in claim 2 where the plate thickness was 8 mm, for example, over 100% of the top planar surface area.
Thus, Jensen teaches the limitations of claim 2.
Regarding claim 3, Jensen teaches the limitations of claim 2, and further Jensen teaches that the first element (34) permits alignment of the plate (10) to the edge of the workpiece (W) by mechanically aligning the first element to the workpiece edge (see Col. 4, lines 1-7).
Regarding claim 4, Jensen teaches the limitations of claim 3, and further Jensen teaches that the first element (34) comprises an alignment surface (lowermost end of body 34, best shown in Fig. 1), the alignment surface, in the first state of the first element (flush configuration, described at Col. 4, lines 8-15), does not protrude beyond a top or a bottom of surface of the plate (10; body may be positioned flush; see Col. 4, lines 8-15), the alignment surface, in a second state of the first element (extended configuration shown in Figs. 1 and 2), protrudes beyond the top or the bottom surface of the plate (see Fig. 1), and the alignment surface contacts the workpiece edge (planar faces of W) when the first element is mechanically aligned to the workpiece edge (Col. 4, lines 5-7).
Regarding claim 6, Jensen teaches the limitations of claim 4, and further Jensen teaches that a plane defined by the alignment surface (lowermost surface of member 34) intersects the region (three-dimensional space below and including lowermost face of body 10) when the first element is in the second state (configuration of Figs. 1 and 2).
Regarding claim 7, Jensen teaches the limitations of claim 2, and further Jensen teaches that the plate (10) comprises a clamp mechanical interface (clamp segments 38, 40, 44, 46; see Fig. 3), the clamp mechanical interface permits a clamp (intended use; segments 10, 12, 14 selectively couple together) to removably couple to the plate (10), the clamp mechanical interface has a maximum thickness (see Fig. 3; height in vertical direction of Figure) relative to the plate thickness, and the clamp mechanical interface maximum thickness is less than or equal to the plate thickness (see Fig. 3).
Regarding claim 8, Jensen teaches the limitations of claim 7 and further Jensen teache4s that the clamp mechanical interface comprises a first region (at groove 42) to permit entry of a first component of the clamp (intended use) into the clamp mechanical interface (segments 38, 40, 44, 46 capable of interconnecting; see Fig. 3), and the clamp mechanical interface (segments 38, 40, 44, 46) comprises a second region (pin 54) that restricts removal of the first component of the clamp when the first component of the clamp is in the second region (see Fig. 4; see Col. 4, lines 34-56, inadvertent separation prevented).
Regarding claim 9, Jensen teaches the limitations of claim 8. Jensen does not explicitly disclose that that clamp is operable to rotate by 180 degrees, 270 degrees, 360 degrees, or more when coupled to the plate using the clamp mechanical interface, however the clamp is not understood to be positively required as part of the claimed jig. A rotating clamp would be reasonably expected to rotate as recited when connected to the jig.
Thus, Jensen is understood to teach the limitations of claim 9.
Regarding claim 10, Jensen teaches the limitations of claim 2, and further Jensen teaches that the second element (28) comprises an alignment surface (lowermost end of bodies 28, best shown in Fig. 1), the alignment surface, in the first state of the second element (flush configuration, described at Col. 4, lines 8-15), does not protrude beyond a top or a bottom of surface of the plate (10; body may be positioned flush; see Col. 4, lines 8-15), the alignment surface, in a second state of the second element (extended configuration shown in Figs. 1 and 2), protrudes beyond the top or the bottom surface of the plate (see Fig. 1), and the alignment surface contacts the workpiece edge (planar faces of W) when the second element is mechanically aligned to the workpiece edge (Col. 3, lines 64-68).
Regarding claim 14, Jensen teaches the limitations of claim 2, and further Jensen teaches that the plate (10) comprises a third element (also 28; select rightmost member 28 with respect to Fig. 1), and the third element protrudes into the region when the third element is in a first state (see Fig. 1; configuration of member 28 extends into space below surface of body 10 where member 28 will interfere with sides of workpiece W).
Regarding claim 15, Jensen teaches that limitations of claim 14, and further Jensen teaches that the third element (rightmost 28) comprises a fiducial indicating a position of the first or second element (leftmost 28; each member 28 shown in Fig. 1 having a surface which extends parallel to each other, at least fairly reading on fiducial relationship).
Regarding claim 16, Jensen teaches the limitations of claim 2, however Jensen does not explicitly disclose that the plate is larger than 300 mm , 350 mm, 400 mm, 450 mm, or 500 mm along a first dimension, and the plate is larger than 200 mm, 250 mm, 300 mm, 350 mm, 400 mm, 450 mm, or 500 mm in a second dimension. Jensen teaches that it may be desirable to accommodate workpieces of different sizes or dimensions (see Col. 3, lines 48-60 and claim 1).
However, the MPEP instructs that “where the only difference between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” There is nothing of record that suggests that the recited dimensions would cause the device of Jensen to perform differently in use, such that one having ordinary skill in the art would at least reasonably expect that the jig disclosed by Jensen would behave in the same manner as the claimed apparatus recited in claim 16 where the plate thickness was 500 mm, for example, along the first dimension and the second dimension.
Thus, Jensen teaches the limitations of claim 16.
Regarding claim 17, Jensen teaches the limitations of claim 2, however Jensen does not explicitly disclose that the plate is larger than 50 mm, 100 mm, 150 mm, or 200 mm along a first dimension, and the region is larger than 50 mm, 100 mm, 150 mm, or 200 mm along a second dimension. Jensen teaches that it may be desirable to accommodate workpieces of different sizes or dimensions (see Col. 3, lines 48-60 and claim 1).
The MPEP instructs that “where the only difference between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” There is nothing of record that suggests that the recited dimensions would cause the device of Jensen to perform differently in use, such that one having ordinary skill in the art would at least reasonably expect that the jig disclosed by Jensen would behave in the same manner as the claimed apparatus recited in claim 17 where the region was 100 mm along a first dimension and 100 mm along a second dimension, for example.
Thus, Jensen teaches the limitations of claim 17.
Regarding claim 18, Jensen teaches the limitations of claim 2, and further Jensen teaches that each feature of the one or more features comprises a machine-readable marker (indicia 66 may be provided for identifying locations along tool 10; see Col. 5, lines 1-6, along with each groove 32 positioned along the surfaces of the body 10), and each machine-readable marker has a marker ID (each element is capable of being read or detected by an unclaimed machine, such as an optical camera, which is understood to fairly read on the claimed limitation).
Regarding claim 19, Jensen teaches the limitations of claim 18, and further Jensen teaches that each feature has a marker ID which is different from marker IDs of the other features (each component is located at least at a different location, such that each ID would be understood to be different from one another, even if identifying information regarding the dimensions were “identical”).
Regarding claim 20, Jensen teaches the limitations of claim 4, however Jensen does not explicitly disclose that the alignment surface of the first element does not protrude more than 20 mm, 15 mm, 10 mm, 8 mm, 5 mm, or 4 mm beyond the top or the bottom surface of the plate during a transition of the first element from the first state to the second state or vice versa.
However, the MPEP instructs that “where the only difference between the prior art and the claims was a recitation of relative dimension of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” There is nothing of record that suggests that the recited dimensions would cause the device of Jensen to perform differently in use, such that one having ordinary skill in the art would at least reasonably expect that the jig disclosed by Jensen would behave in the same manner as the claimed apparatus recited in claim 20 where the first element protrudes 5 mm below the bottom surface during transition, for example.
Thus, Jensen teaches the limitations of claim 20.
Allowable Subject Matter
Claims 5 and 11-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, the prior art of record does not explicitly disclose that “the first element retracts from the second state to the first state using a spring mechanism,” in combination with the remaining limitations of the claim.
Regarding claim 11, the prior art of record does not explicitly disclose that “the second element remains in the first state based on magnetic force applied on the second element,” in combination with the remaining limitations of the claim. Jensen teaches a plurality of holding screws 30 which secure the first and second components in desired orientations, but does not fairly suggest modifying the device to include magnetic securement, absent motivation from Applicant’s own Specification.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication 2015/0016907 to Frick teaches a drilling jig.
United States Patent Application Publication 2020/0101541 to Wilson et al. teaches a drilling jig.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRELL C. FORD whose telephone number is (313)446-6515. The examiner can normally be reached 8:30 AM to 5:15 PM, Monday to Friday.
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/DARRELL C FORD/Examiner, Art Unit 3726