DETAILED ACTION
Terminal Disclaimer
The terminal disclaimer filed on August 14, 2025 has been reviewed and is NOT accepted. This is because the terminal disclaimer any patent issued to application number 15/885,988, rather than the instant application of 18/611,053.
Claim Interpretation
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:
“attaching 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.
Due to the invocation of 35 U.S.C. 112(f), the limitation “attaching member” is being interpreted so as to comprise “a shaft or rod,” as taught by the Specification (paragraph 54), or a functional equivalent thereof.
Double Patenting
Claims 1 – 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 11 of U.S. Patent No. 10,493,605. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of claims 1 – 13 of the instant application are anticipated by claims 1 – 11 of ‘605.
Regarding claim 1, each of the limitations of claim 1 of the instant application are anticipated by claim 1 of ‘605. Examiner recognizes that the claims of ‘605 are directed towards a method, while the claims of the instant application are directed towards an apparatus for use in the method. However, it is the position of the Examiner that the process of claims ‘605 positively recites and requires the apparatus of the claims of the instant application.
Response to Arguments
Applicant's arguments filed August 14, 2025 have been fully considered but they are not persuasive.
Applicant argues, on pages 5 – 7, that the limitation “attaching member” does not invoke interpretation under 35 U.S.C. 112(f). Examiner disagrees. Applicant bases this argument by stating that the term “attaching member” requires a ‘structural member connected or joined to something’ and, therefore, provides sufficient structure for one skilled in the art to perform the claimed function. Examiner disagrees. This is because Applicant’s explanation of the required structure (‘a structural member connected or joined to something’) first does not provide any structural requirement of the limitation and furthermore, does not provide any structure required for performing the claimed function of “releasably connectable to an end of the shaft.”
Examiner notes that the previous limitations of “first optical sending unit,” “second optical sending unit,” and “optical locating sending units” have been amended to “first light source,” “second light source” and “locating light sources,” respectively. It is the position of the Examiner that these amended limitations do not invocate interpretation under 35 U.S.C. 112(f).
Conclusion
Applicant's amendment necessitated the new ground(s) 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 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 CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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, Sunil Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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