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 Invention I (claims 1 – 12) in the reply filed on June 22, 2026 is acknowledged. The traversal is on the ground(s) that the subject matter of the claimed inventions are sufficiently related that a thorough search of the elected invention necessarily includes a search of the non-elected inventions, and there is no serious burden on the examiner to examine the entire application. This is not found persuasive because a prima facie form of evidence is a showing of different classifications. Such is the case here. The elected invention is classified in B23Q 3/06, while the non-elected inventions are classified in B23Q 2703/02 and H10P 72/1918. Having to perform multiple non-overlapping searches in a single application would indeed be a burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (Inventions II and III), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 22, 2026.
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). Correction of the following is required: Examiner has been unable to find support for the limitation of “locating guides extending into the mounting space of the frame,” as recited by claim 11. While the Specification teaches ‘locating guides’ (paragraph 15), Examiner has been unable to find support for the ‘locating guides extending into the mounting space of the frame.’
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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:
“locking mechanism” recited in claim 1
“engagement mechanism” recited in claim 6
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.
The limitation “locking mechanism” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“mechanism”).
(B) The generic placeholder is modified by functional language (“locking” or ‘for locking’ and “that [is configured to] lock the clamp to the frame at different heights of the rails”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “locking mechanism” will be interpreted so as to comprise a ‘rotatable cam mechanism,’ as taught by the Specification (paragraph 13), or an equivalent thereof.
The limitation “engagement mechanism” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“mechanism”).
(B) The generic placeholder is modified by functional language (‘for engagement’).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “engagement mechanism” will be interpreted so as to comprise a ‘a hook or protrusion extending downward from a main body of the clamp,’ as taught by the Specification (paragraph 19), or an equivalent thereof.
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 – 12 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 1 recites the limitation “... a locking mechanism that locks the clamp to the frame at different heights of the rails” in the last paragraph of the claim. Examiner notes that the preamble of the clam is directed towards “a fixture.” Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘using a locking mechanism to lock the clamp to the frame at different heights of the rails,’ such that the claim is directed towards ‘a method of securing a substrate onto a fixture,’ or whether Applicant intends the limitation to recite functional language of the ‘locking mechanism,’ such that the claim is directed towards the ‘fixture’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a locking mechanism that is configured to lock the clamp to the frame at different heights of the rails.”
Claim 3 recites the limitation “wherein the rails comprise a groove ...” It is unclear as to whether Applicant intends the limitation to require that ‘each of the rails’ comprise a ‘groove’ or whether Applicant intends the limitation to require that the entirety of the rails comprise a single ‘groove.’ For the purposes of this Office Action, Examiner will interpret the limitation as “wherein each of the rails comprise a groove ...”
Claim 4 recites the limitation “a flange.” It is unclear as to whether Applicant intends the limitation to refer to one of the “flanges” previously set forth in claim 3, or whether Applicant intends to set forth an additional ‘flange’ which is separate and independent from the ‘flanges’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to set forth a ‘flange’ which is separate and independent from the ‘flanges’ previously set forth.
Claim 6 recites the limitation “the main body.” There is insufficient antecedent basis for the limitation in the claim.
Claim 9 recites the limitation “wherein the locking mechanism ... engages and disengages with one of the inwardly extending flanges of the rails as it is rotated within the first part.” Examiner notes that the clam is directed towards “a fixture.” Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘the locking mechanism engaging and disengaging with one of the inwardly extending flanges of the rails as it is rotated within the first part,’ such that the claim is directed towards ‘a method of securing a substrate onto a fixture,’ or whether Applicant intends the limitation to recite functional language of the ‘locking mechanism,’ such that the claim is directed towards the ‘fixture’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “wherein the locking mechanism ... is configured to engage and disengage with one of the inwardly extending flanges of the rails as it is rotated within the first part.”
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(s) 1 – 8 and 10 - 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiba (U.S. Patent Application Publication Number 2004/0184684).
As to claim 1, Shiba teaches a fixture (abstract) comprising: a frame comprising a mounting space provided between a top section, a bottom section, and rails extending between the top section and the bottom section (figure 1, element 10 being the ‘frame’ and elements 14 being the ‘rails’; paragraph 27). Examiner notes that the rails extend between a ‘top section’ and a ‘bottom section’ because “top” is commonly defined as “a part of a thing that is first” and “bottom” is commonly defined as “a part of a thing that is last.” Therefore, Examiner is reasonably interpreting the frame such that one end of the frame is the ‘top section’ and the opposing end of the frame is the ‘bottom section.’ Shiba further teaches a clamp slidably mounted to the rails, the clamp including a locking mechanism, comprising a rotatable cam mechanism, that is configure to lock the clamp to the frame at different heights of the rails (figures 1 – 3 and 5, element 17 being the ‘clamp’ and left element 22 being the ‘locking mechanism’ and ‘rotatable cam mechanism’; paragraphs 27 – 29 and 31 – 32). Examiner notes that the ‘cam mechanism’ is “rotatable” because the ‘cam mechanism’ is configured to be rotated if the entirety of the frame is rotated. Examiner further notes that the locking mechanism locks the clamp at different ‘heights’ because “height” is commonly defined as “a distance between first and second points of an object.”
As to claim 2, the discussion of claim 1 is incorporated herein.
As to claim 3, Shiba teaches that each of the rails comprise a groove provided between sidewalls and flanges inwardly extending from the sidewalls (figure 5, element 19 being the ‘groove,’ see below; paragraph 30).
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As to claim 4, Shiba further teaches that the clamp comprises a first part comprising a flange corresponding in shape and which is slidable within the groove of the rails (figure 5, left element 22 being the ‘flange’).
As to claim 5, Shiba further teaches that the first part of the clamp further comprises a channel which accommodates the inwardly extending flanges of the rails (figure 5, see below).
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As to claim 6, Shiba further teaches that the first part includes an engagement mechanism, comprising a protrusion, which extends downwardly from an end of a main body of the clamp (figure 5, see below).
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As to claim 7, Shiba teaches that the clamp comprises a second part rotatably mounted within a recessed portion of the first part (figure 5, element 24 being the ‘second part’ and element 25 being the ‘recessed portion’; paragraph 34).
As to claim 8, Shiba teaches that the second part of the clamp includes the locking mechanism that is engageable with one of the inwardly extending flanges of the rails (figure 5, left element 22).
AS to claim 10, Shiba teaches that the frame includes a mounting plate mounted to the upper section of the frame (figure 1, element 12 being the ‘mounting plate’; paragraph 23).
As to claim 11, Shiba teaches locating guides extending into the mounting space of the frame (figure 2, element 13 being the ‘locating guides’; paragraph 27).
As to claim 12, Shiba teaches a holder structured to store identification information (figure 1, element 12 being the ‘holder’; paragraph 23).
Allowable Subject Matter
Claim 9 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: As to claim 9, Shiba teaches that the locking mechanism comprises a cam mechanism that extends beyond a surface of the main body and is configured to engage and disengage with one of the inwardly extending flanges of the rails (figure 5, left element 22; paragraphs 31 – 34). However, Shiba teaches that the engagement and disengagement occurs when the cam mechanism is linearly moved toward and away from the inwardly extending flanges (figure 5, elements 22 and 21a; paragraphs 31 – 34), rather than the cam mechanism engaging and disengaging by rotation of the cam mechanism, as recited by claim 9.
Conclusion
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, Thomas Hong can be reached at (571) 272-0993. 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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