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 .
Election/Restrictions
Applicant's election with traverse of Group I (Claims 1-7) and Species 1 (Shown in Figs. 1 & 2) in the reply filed on August 6, 2026 is acknowledged. The traversal is on the ground(s) that allegedly there is not a serious search and examination burden and allegedly the species do not have mutually exclusive characteristics.
This is not found persuasive because there would be a serious search/examination burden if restriction were not required at least because the inventions require a different field of search (e.g. different keywords, etc.). As to the species not having mutually exclusive characteristics, the Examiner notes in regards to species 3 (shown in Fig. 4), the Examiner did not chose to make that a separate species, the Applicant clearly states in their specification that “Fig. 4 is a schematic view of an underwater bionic propeller according to another embodiment of the present application.” If Figure 4 is “another embodiment”, then it necessarily has at least some difference and therefore at least some mutually exclusive characteristic, otherwise Figure 4 would not be “another embodiment.” The adjustable-amplitude sinusoidal mechanism does not require the gearing arrangement of another species, as it can be used with other species such as one where there is a belt for transmission. Likewise the species shown by Figs. 1 and 2 does not require an adjustable-amplitude sinusoidal mechanism and rather appears to have a non-adjustable reciprocating mechanism (1) since the components of the adjustable-amplitude sinusoidal mechanism are not shown in Figs. 1 and 2 (for example Figs. 1 and 2 do not have a one-way bearing 115. A two-way bearing is a characteristic that is mutually exclusive with the characteristic of one-way bearing).
Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Claim 7 is for species where the transmission gear is in transmission connection with the swing gear through a transmission assembly that is a belt transmission assembly or a chain transmission assembly. The elected species 1 shown in Figs. 1 and 2 has a transmission assembly where the transmission gear comprises only gearing. Applicant timely traversed the restriction (election) requirement in the reply filed on August 6, 2026.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Per MPEP § 714 and 37 CFR 1.121, amendments to the claims should be shown by the following. “The text of any added subject matter must be shown by underlining the added text [(e.g. example added text)]. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters [(e.g. ]. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived [(e.g. to delete a period [[.]], etc.)].” Similarly, for amendments to the specification, “The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived”.
The Applicant’s claims as filed on 8/06/2026 contain amendments that are not properly marked up.
For example, in claim 1, line 4 (or 5) is missing “and” from the claims as originally filed. Claim 1 has a status of “original” when it has been amended. The change, a deletion of the word “and”, is not struck-through or enclosed in double brackets.
In claim 2, line 4, the term “swing gear” was changed to “swinging gear”. This addition is not underlined, and the status of claim 4 is “original” when it has been amended.
In claim 2, line 6, the term “swing gear” was changed to “swinging gear”. This addition is not underlined, and the status of claim 4 is “original” when it has been amended.
In claim 5, line 4 (or 5) is missing “and” from the claims as originally filed. Claim 5 has a status of “original” when it has been amended. The change, a deletion of the word “and”, is not struck-through or enclosed in double brackets.
These are the only unmarked changes that the Examiner has found, the Examiner cannot guarantee other un-marked changes were made. The Applicant should review both sets of claims (those filed originally on 4/30/2024 and those amended on 8/06/2026) and bring any other inadvertent changes to the attention of the examiner in their reply. The status of the claims should be corrected (e.g. claims that have been amended should not have the status of “original”, etc.).
As a one time courtesy, since the un-marked changes appear relatively trivial, the Examiner has examined the claims (as file on 8/06/2026) on the merits. The Examiner reminds the Applicant that in any future filing, improperly marked or un-marked changes may result in the Applicant receiving a notice of non-compliant amendment.
Claim 2 is objected to because of the following informalities:
Claim 2 recites the limitation "the swinging gear" in line 4. In addition to being an unmarked amendment, see above, there is insufficient antecedent basis for this limitation in the claim. There would be antecedent basis for the term “the swing gear”.
Claim 2 recites the limitation “the swinging gear” in line 6. While there is per se antecedent basis currently provided at line 4 for this limitation, once line 4 is corrected to “the swing gear” there will not be proper antecedent basis for the term “swinging gear” in line 6.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
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 1-3 and 5-6 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.
According to MPEP § 2173.03, “a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.
Claim 1 recites “a swing mechanism, comprising a swing arm; a steering mechanism comprising a driving end in transmission connection with the swing arm”. However, the transmission connection between the steering mechanism and the swing arm appears to not be at an end of the steering mechanism 2 (which includes 21 and 22) but rather at the middle of the steering mechanism 2. This inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “reciprocating manner” in claim 1 is used by the claim to mean “oscillating manner,” while the accepted meaning is “linear back-and-forth manner.” The term is indefinite because the specification does not clearly redefine the term.
Furthermore, the term “reciprocating” (or similar words, e.g. “reciprocate”, etc.) is in some instances used in the specification to refer to what, from the drawings, appears to be oscillating, and is in some instances used to refer to what, from the drawings, appears to be “reciprocating”, as a person of ordinary skill in the art. The term “reciprocating” thus is sometimes used properly as a person of ordinary skill in the art would understand the term, and is sometimes has a different meaning without the term being clearly redefined. This conflict between the specification disclosure and the claimed subject matter renders the scope of the claims uncertain.
Claim 1 recites “a reciprocating manner” in lines 4, 6, 10, and 12. The recitations of “a reciprocating manner” lines 6, 10, and 12 appear to be double inclusion. See MPEP § 2173.05(o). Likewise dependent claim 2 recites “a reciprocating manner” which appears to be double inclusion.
The term “independently” in claim 1 at lines 8 and 11 is a relative term which renders the claim indefinite. The term “independently” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claim does not specify relative to what the swinging is independent.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “swinging” in claim 1 in the context of “a swinging area of the steering mechanism” is used by the claim to mean “linear movement” while the accepted meaning is “moving to and fro as or like a suspended body; oscillating” The term is indefinite because the specification does not clearly redefine the term.
Claim 5 recites the limitation “the screw rod deviating from the output member.” In lines 5-6. There is insufficient antecedent basis for this limitation in the claim. It has not been previously established that the screw rod “deviates” from the output member.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The accepted meaning of the word “deviating” is “to step away, turn aside, or differ from a set path, standard, or expected rule”. It is not clear how the term is used in claim 5 and in the specification, except that the word “deviating” appears to deviate from its accepted meaning. The term is used in the context of the limitation “a steering driving member (222), which is in transmission connection with one end of the screw rod (221) deviating from the output member (12)
Appropriate correction is required.
Claim 1 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of “wherein, the steering mechanism drives the swing arm to swing independently to change a swinging area of the reciprocating mechanism driving the swing arm to swing in a reciprocating manner, or the reciprocating mechanism drives the swing arm to swing independently to change a swinging area of the steering mechanism driving the swing arm to swing in a reciprocating manner” is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: The former alternative limitation (i.e. before the “or”) relies on the steering mechanism (2) while the latter alternative limitation (i.e. after the “or”) relies on the reciprocating mechanism (1). These are structurally different components and therefore the alternatives do not share a single structural similarity. Additionally, the former alternative limitation is for changing the direction for the purpose of steering, while the latter alternative limitation is for changing the amplitude but not direction. Therefore the alternative limitations recited do not have different purposes and do not share a common use.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, as best understood, is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chen (CN109720526A, cited by Applicant).
Chen discloses:
Re claim 1.
A swinging device, comprising:
a swing mechanism (including 12), comprising a swing arm (12);
a steering mechanism (7) comprising a driving end in transmission connection with the swing arm so as to drive the swing arm to swing in a reciprocating manner;
a reciprocating mechanism (including 5), which is in transmission connection with a fixed end of the steering mechanism so as to drive the swing arm to rotate in a reciprocating manner by driving the steering mechanism to move;
wherein, the steering mechanism (including 7) drives the swing arm (12) to swing independently to change a swinging area of the reciprocating mechanism driving the swing arm to swing in a reciprocating manner, or the reciprocating mechanism (including 5, 6) drives the swing arm (12) to swing independently to change a swinging area of the steering mechanism (including 7) driving the swing arm to swing in a reciprocating manner.
Re claim 2. The swinging device of claim 1, wherein the swing mechanism (including 12) further comprises a swing gear (9), the swing arm (12) is connected to the swing gear, and a length direction of the swing arm is disposed at an angle to a rotation axis direction of the swing gear (12);
the steering mechanism (including 7) comprises a rack (7) and a steering drive assembly (hinge portion connecting 6 and 7), the swinging gear (12) is in transmission connection with the rack (7), and a driving end of the steering drive assembly (hinge portion connecting 6 and 7) is connected to the rack (7) so as to drive the rack to reciprocate in a first direction and drive the swinging gear (12) to rotate in a reciprocating manner.
Re claim 3. The swinging device of claim 2, wherein the reciprocating mechanism (including 5) comprises a reciprocating drive assembly (5) and an output member (6), the reciprocating drive assembly (5) drives the output member (6) to reciprocate in the first direction, the output member (6) is connected to a fixed end of the steering drive assembly (hinge portion connecting 6 and 7) to drive the steering drive assembly (6) and the rack (7) to move together in the first direction.
Claim(s) 1-3 and 5, as best understood, is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yamaguchi (US2015/0321690).
Yamaguchi discloses:
Re claim 1
A swinging device, comprising:
a swing mechanism (including 3), comprising a swing arm (3);
a steering mechanism (including 8) comprising a driving end in transmission connection with the swing arm so as to drive the swing arm (8) to swing in a reciprocating manner;
a reciprocating mechanism (including 20), which is in transmission connection with a fixed end of the steering mechanism so as to drive the swing arm to rotate in a reciprocating manner by driving the steering mechanism to move;
wherein, the steering mechanism (including 8) drives the swing arm (including 3) to swing independently to change a swinging area of the reciprocating mechanism driving the swing arm to swing in a reciprocating manner, or the reciprocating mechanism (including 20) drives the swing arm (including 3) to swing independently to change a swinging area of the steering mechanism driving the swing arm to swing in a reciprocating manner.
Re claim 2. The swinging device of claim 1, wherein the swing mechanism (including 3) further comprises a swing gear (tie rod 9 on right in Fig. 1; the gear as claimed is not required by the claim to have teeth), the swing arm (3) is connected to the swing gear (9 on right in Fig. 1), and a length direction of the swing arm is disposed at an angle to a rotation axis direction of the swing gear (See Fig. 1);
the steering mechanism (including 8) comprises a rack (8) and a steering drive assembly (pinion 7), the swinging gear (9 on right in Fig. 1) is in transmission connection with the rack (8), and a driving end of the steering drive assembly (7) is connected to the rack (8) so as to drive the rack (7) to reciprocate in a first direction and drive the swinging gear (9 on right in Fig. 1) to rotate in a reciprocating manner.
Re claim 3. The swinging device of claim 2, wherein the reciprocating mechanism (including 20) comprises a reciprocating drive assembly (including 10 & 15) and an output member (30), the reciprocating drive assembly drives the output member (30) to reciprocate in the first direction, the output member is connected to a fixed end of the steering drive assembly to drive the steering drive assembly and the rack to move together in the first direction.
Re claim 5. The swinging device of claim 3, wherein the steering drive assembly comprises a screw assembly, the screw assembly comprising:
a screw rod (screw portion of 8), which is in transmission connection with the rack (8), and one end of the screw rod (screw portion of 8) is in rotary connection with the output member (30);
a steering driving member (tie rod 9 on left in Fig. 1), which is in transmission connection with one end of the screw rod (screw portion of 8) deviating from the output member (30).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 6, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN109720526A, cited by Applicant) in view of Lackner (US2009/0004933).
Re claim 6
Chen discloses all claim dependency limitations, see above, and further discloses the rack (7) is in transmission connection with the swing gear (9), but is silent to wherein the swing mechanism further comprises a transmission gear, and the rack is in transmission connection with the swing gear through the transmission gear.
Lackner teaches wherein the swing mechanism further comprises a transmission gear (26), and transmission connection with the swing gear (27) through the transmission gear (26), for the purpose of achieving the required torque (para. [0036]).
It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to modify the device of Chen discloses such that the swing mechanism further comprises a transmission gear, and the rack in transmission connection with the swing gear through the transmission gear, as taught by Lackner, with a reasonable expectation of success, for the purpose of achieving the required torque.
Claim(s) 6, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN109720526A, cited by Applicant) in view of Yan (CN110901867, cited by Applicant).
Re claim 6
Chen discloses all claim dependency limitations, see above, and further discloses the rack (7) is in transmission connection with the swing gear (9), but is silent to wherein the swing mechanism further comprises a transmission gear, and the rack is in transmission connection with the swing gear through the transmission gear.
Yan teaches wherein the swing mechanism further comprises a transmission gear (17-3), and transmission connection with the swing gear (17-4) through the transmission gear (17-3), for the purpose of achieving the desired swing through the gear transmission ratio determined by gear stages (see abstract).
It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to modify the device of Chen such that the swing mechanism further comprises a transmission gear, and the rack is in transmission connection with the swing gear through the transmission gear, as taught by Yan, with a reasonable expectation of success, for the purpose of achieving the desired swing through the gear transmission ratio determined by gear stages.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jemt (US2011/0287674) discloses a watercraft propulsion device.
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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/Supervisory Patent Examiner, Art Unit 3618
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