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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
The specification does not provide antecedent basis for the following terms in the claims as amended:
“a cylindrical wall with external surfaces”
“mounting element”
“second aperture”
“first aperture”
“third aperture”
“recessed portion”
“fourth aperture”
Correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “scanner” and “a cylindrical wall with external surfaces“ in claims 1 and 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-18 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.
Regarding claims 1 and 11, the amended claims contain terms that are not present in the specification nor labeled in the figures. The lack of support creates a great deal of uncertainty in the claims.
The examiner has attempted to match the claim’s terms to the elements in the figures below, but many terms are not found.
In claim 1:
An apparatus (Figs. 1 and 2) configured to receive a scanner (present in specification but not present in figure) and an object (present in specification but not present in figure) having a cylindrical wall (not present in specification nor figure) with external surfaces (not present in specification nor figure), the apparatus comprising:
a mounting element (not present in specification nor figure, however “element” is disclosed as ref 24) including a socket (ref 30) defining a second aperture (specification discloses apertures 36 and 46, it is believed this is ref 36, but the term “second” is not used in the specification) that is configured to receive a first aperture (specification discloses apertures 36 and 46, it is believed this is ref 46, but the term “first” is not used in the specification) of the scanner and a bore (ref 28) defining a third aperture (specification discloses apertures 36 and 46, it is unclear which aperture is the “third aperture” as the term “third” is not used in the specification) that is configured to receive the object that is to be scanned by the scanner,
wherein the socket is disposed at an upper portion of the mounting element and includes a recessed portion (term is not present in the specification) to receive a base (term is not present in the specification) of the scanner, wherein the second aperture is configured to communicate with and align with the third aperture of the bore and the first aperture of the scanner such that the external surfaces of the cylindrical wall of the object are positioned to be scanned in a scanning range of the scanner.
The same reasoning applies to claim 11, which has similar terms as claim 1, but the preamble terms of claim 1 are in the body of claim 11.
As a proper mapping of the claims is not clear from the specification and figures, there is great deal of confusion and uncertainty as to the proper interpretation of the claims. For example, the claims recite first aperture through fourth apertures, but the specification only uses “aperture” and has two reference numbers in the figures, 36 and 46. Furthermore, the claim recites “an object having a cylindrical wall with external surfaces”, which is not found in the figures. Even furthermore, the claim recites “the second aperture is configured to communicate with and align with the third aperture of the bore and the first aperture of the scanner such that the external surfaces of the cylindrical wall of the object are positioned to be scanned in a scanning range of the scanner”. However, it is not clear which apertures the claim refers to and how “the external surfaces of the cylindrical wall of the object are positioned”.
Therefore, claims 1 and 11 are rejected under 35 USC 112(b).
Claims 2-10 and 12-18 are rejected based upon their dependency on claim 1 and 11.
The Examiner requests that future amendments use terms in the specification and show where in the figures each added element is supported.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As discussed above, the specification as filed does not provide support for the listed claimed limitations.
Regarding the above claims, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ292 (CCPA 1962), a rejection under 35 USC 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. Accordingly, examination of the claims under prior art is precluded at this time. MPEP 2173.06 Sec. Il.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
As best understood, it appears Knodle (US 4859858) still anticipates at least claim 1, as Knodle teaches an apparatus (Fig. 8, ref 28), comprising an element having a bore (ref 46 and through passages 52, 54), the element having a socket (mounting recesses 58, 60, with support surfaces at the inner ends 62, 64, and flanges 66, 68, at opposite ends) and the socket having an aperture (refs 74, 76) which communicates with the bore (refs 46, 52, 54).
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 DOMINIC J BOLOGNA whose telephone number is (571)272-9282. The examiner can normally be reached Monday - Friday 7:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara E Geisel can be reached at (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC J BOLOGNA/Primary Examiner, Art Unit 2877
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