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 .
37 C.F.R. 1.111
The reply filed 8/5/2026 does not fully comply with 37 C.F.R. 1.111 with regard to the Double Patenting rejections of the previous Office action. See MPEP § 714.02.
Applicant’s request (p.1 of remarks filed 8/5/2026) that the Double Patenting rejections be held in Abeyance is noted. However, the section of 35 CFR 1.111(b) that allows for abeyance of minor matters of form until allowable subject matter is indicated (e.g., claim 8) does not apply to double patenting rejections regardless. See MPEP 804(I)(B)(1), which states:
“A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional. As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03.” (emphasis added)
The examiner has chosen to exercise discretion in accordance with MPEP § 714.03 to enter and “simply act on” the submission to “simply reiterate the rejection” in the interest of compact prosecution. However, subsequent submissions must fully comply with 37 C.F.R. 1.111 in regard to all rejections of record to include, but not limited to, the double patenting rejections.
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 8/5/2026 has been entered.
Election/Restrictions
Claims 17-20 remain withdrawn. See the previous 7/10/2025 Office Action explanation of the restriction/election by original presentation. Applicant’s subsequent 1/12/2026 response did not traverse the restriction, and the restriction was made FINAL in the previous 2/5/2026 Office action.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11306806 in view of the common skill/knowledge/sense in the actuator art (i.e., one skilled and knowledgeable enough to design, manufacture and use actuators).
Claim 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11940039 in view of the common skill/knowledge/sense in the actuator art (i.e., one skilled and knowledgeable enough to design, manufacture and use actuators).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the prior patent claims are so similar as to have suggested as obvious the current application claims to one of ordinary skill/knowledge/sense in the art before the effective filing date of the claimed invention. The copending claims are not overly complex and lie in the same general field as applicant's claimed invention (having overlapping inventorship and common ownership therewith). Accordingly, the pertinence of the copending claims to the current claims as well as what ordinary skill/knowledge in the art would suggest should be readily apparent and flows naturally from the claims.1
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.
Claims 6-8 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 6 is unclear as to whether “one arm” is to refer to one of the arms previously set forth in claim 1 or to an additional arm.
Claims 7 and 8 depend from the above and are thus similarly unclear/rejected.
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.
Claims 1-7 and 9-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Booker US20170242218.
Claim 1. Booker discloses an actuator system, comprising: a frame (outer portion of 126 as seen in fig.1 and/or 126 as seen in fig.6A) comprising an internal region (region defined by arms 109-1, 109-2, 109-3) defined by a plurality of arms (109-1, 109-2, 109-3), each of the arms extending in a radially outward direction relative to a central axis of the frame; a rotary base (122 and/or 123 as seen in fig.4) configured to receive input comprising rotational motion about the central axis; and a carriage (128 as seen in fig.4; and 104/105 as seen in fig.6A) positioned within the internal region of the frame (128 extends within the internal region of the frame as seen in figs.2B, 2C and 3; and 104/105 within the internal region of the frame as seen in fig.6A) and coupled to the rotary base through at least one member (member 124 extends from rotary base 123 to the carriage portion 128) that extends directly from the rotary base to the carriage, wherein the frame, when prevented from rotating about the central axis, constrains the carriage to move in a direction parallel to the central axis in response to rotational force transmitted to the carriage from the rotary base (see direction arrow of 126 in fig.1 and/or note MPEP 2112.01 and 2114 regarding inherency of functions in product claims and applicant’s burden to obtain/test the prior art structure to prove otherwise).
Claim 2. The actuator system of claim 1, wherein the at least one member comprises at least one flexure (three flexures 124).
Claim 3. The actuator system of claim 2, wherein each flexure of the at least one flexure is oriented at an oblique angle relative to the central axis (see figs.3 and 4).
Claim 4. The actuator system of claim 3, wherein each flexure comprises a plurality of connected blade flexures (blades of each flexure 124, seen connected perpendicularly along the flexure axis in figs. 3-5B) oriented perpendicularly along a common flexure axis.
Claim 5. The actuator system of claim 1, wherein the at least one member (124) is oriented to transmit the rotational force along a direction that is oblique relative to the central axis (see figures and MPEP 2112.01 and 2114 regarding inherency of functions/properties).
Claim 6 (as best understood, see 35 USC 112 rejections). The actuator system of claim 1, wherein the frame comprises a plurality of stacked blade flexures (107 as seen in fig.6A) and wherein each stacked blade flexure of the plurality of stacked blade flexures is aligned with one arm (see 35 USC 112 rejection, 109-1 as seen in fig.6A) of the frame.
Claim 7 (as best understood, see 35 USC 112 rejections). The actuator system of claim 6, wherein each stacked blade flexure of the plurality of stacked blade flexures that is aligned with one arm of the frame comprises a first set of stacked blade flexures (middle two 107-2) positioned between the one arm and a first surface of the carriage (surface of 105) and a second set of stacked blade flexures (outer two 107-1 and 107-N) positioned between the one arm (portions of 109-1 radially within 107-1 and 107-N as seen in fig.6A) and a second surface of the carriage (surface of 104).
Claim 9. The actuator system of claim 1, further comprising a shaft (shaft of 127) connected to the carriage.
Claim 10. The actuator system of claim 9, wherein the shaft extends through an aperture in the frame (see figs.3 and 4).
Claim 11. The actuator system of claim 10, wherein a center of the aperture is positioned along the central axis (see figs.3 and 4).
Claim 12. The actuator system of claim 1, wherein the plurality of arms are oriented symmetrically about the central axis (see figs. 1 and/or 4).
Claim 13. The actuator system of claim 1, wherein the plurality of arms comprises three arms (see fig.4).
Claim 14. The actuator system of claim 2, wherein the at least one flexure comprises three flexures (see fig.4).
Claim 15. The actuator system of claim 1, further comprising a drive unit (112 and/or 116) configured to deliver the input comprising the rotational motion to the rotary base.
Claim 16. The actuator system of claim 15, wherein the drive unit comprises a motor (112).
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the double patenting rejections and the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant argues that Booker does not disclose claim 1 as newly amended. This is not persuasive. Booker continues to anticipate claim 1 as is detailed in the reworded rejections above.
Conclusion
All rejected claims 1-16 are patentably indistinct from claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper between the current and previous versions of claims 1-16) and all claims 1-16 could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(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 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 mailing 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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
1 See 37 C.F.R. 1.104(c)(2) which states "In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement… Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon…”
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