DETAILED ACTION
In response to the Election made June 4, 2026
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed March 8, 2024, are accepted.
Abstract
The Abstract filed March 8, 2024, is accepted.
Specification
The specification filed March 8, 2024, has been entered.
Election/Restrictions
Claims 2 - 3 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 24, 2026.
Applicant's election with traverse of claims 1, 5, 8 – 18, 20, 24, 28, 30 and 38 - 41 in the reply filed on July 29, 2026, is acknowledged. The traversal is on the ground(s) that there would be no serious search burden. This is not found persuasive because, as explained in the restriction requirement mailed June 10, 2026, each group has distinct scope of inventions who operate differently from each other. Search and consideration of the different inventions increase the time needed to review each prior art and their structural variations and affects the determination of patentability as each variation would require a separate evaluation. This is evidenced by the separate classification of the invention.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1, 5, 8 – 18, 20, 24, 28, 30 and 38 - 41 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.
In this case, claim 1 recites “a measurement strut for measuring a separation between two relatively moveable support members of a machine” but the specification and the claims fail to describe how it is used for measuring and which aspect of the invention accomplishes the separation measurement requirement. Is the measurement strut provided with measuring scale indicia? Is the measurement strut provided at predetermined sizes to indicate the measurement? Is each strut adjustable to various sizes to determine the particular separation? Appropriate correction is required.
Claims 5, 8 – 18, 20, 24, 28, 30 and 38 – 41 are rejected as being dependent from claim 1.
Claims 1, 5, 8 – 18, 20, 24, 28, 30 and 38 - 41 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent claims 1 recite the limitations: “a measurement strut for measuring a separation between two relatively moveable support members of a machine”. The instant filed specification fails to provide sufficient disclosure in regard to structure that performs the separation measurement between support members and how the measurement is accomplished, thus resulting in a gap on how to make and/or use the instant claimed invention. Based on the instant filed specification, the "measurement strut" is removably coupled between the support members by various coupling arrangements that are safely decoupled when a force is applied, but fails to directly provide support of enablement in regard to how the measurement is accomplished.
Applying the Wands factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988 and MPEP 2164.01(a)), Wands factor (F), being the amount of
direction provided by the inventor, it is clear the instant disclosure fails to provide any directions
in regard to measurement of the separation between support members or predetermined thresholds. There are no details provided or instructions of any determined separation, or any specific aspects of how the measurement is performed in which one of the ordinary skill in the art would determine the aforementioned properties.
Wands factor (G), being the existence of working examples, the instant disclosure fails
to disclose any details or existence of any working examples of the measurement determination by means of the measurement strut or predetermined thresholds. Wands factor (H), being the quantity of experimentation needed to make and/or use the invention based on the content of the disclosure, the instant filed specification fails to provide any details and/or explanation in regard to any particular measurement determination or predetermined thresholds that would directly
lead to the measurement of any particular one of the aforementioned properties of the system, and, as such, would require an undue amount of experimentation for one of ordinary skill
in the art to not only generate an inordinate amount of measurements to obtain the predetermined thresholds, and subsequently determined the separation between support members, thus failing to enable one of ordinary skill in the art to make and/or use the instant claimed invention.
Claims 5, 8 – 18, 20, 24, 28, 30 and 38 – 41 are rejected as being dependent from claim 1.
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, 5, 8 – 18, 20, 24, 28, 30 and 38 - 41 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 claim 1, the phrase “relatively moveable support members” is considered ambiguous because it is not clear whether the members move relative to each other, and/or are individually moveable, and/or must be capable of movement in a particular direction. Therefore, the language is considered indefinite because the metes and bounds of the claimed subject matter cannot be fully ascertained.
The term “adapted to become at least partially decoupled” is considered ambiguous because it is not clear what is characterized to fulfill the requirement of being “partially decoupled”. Does it mean to separate completely? To pivot? To slide off? To deform? Does the decoupling happen at one or both ends, individually or simultaneously? The boundaries of what is considered “decoupled” are considered indefinite because the metes and bounds of the claimed subject matter cannot be fully ascertained.
With regards to the “predetermined threshold”, as claimed, it is not clear how these parameters are obtained and/or stored. Appropriate correction is required.
Claims 5, 8 – 18, 20, 24, 28, 30 and 38 – 41 are rejected as being dependent from claim 1.
Conclusion
Due to the presence of the rejections under 35 U.S.C. 112(a), a thorough search and consideration of the claimed invention in regard to the prior art by the Examiner could not be reasonably made, and the absence of any prior art rejection of the claimed invention is not an indication of allowable subject matter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review the PTO-892 form accompanying this Office Action for a listing of relevant Prior Art cited by the examiner.
Duprez et al. (US 2021/0039259 A1) discloses measurement strut (10) for measuring a separation between two relatively moveable support members (12, 14, 24) of a machine, the strut being removably couplable between the two support members, as ballbars are inherently know to be coupable when in use.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YARITZA GUADALUPE-MCCALL whose telephone number is (571)272-2244. The examiner can normally be reached Mon -Thu, 8:00am - 6:00pm.
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, Laura E Martin can be reached at 571-272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YARITZA GUADALUPE-MCCALL
Primary Examiner
Art Unit 2855
September 2, 2026
/YARITZA GUADALUPE-MCCALL/Primary Examiner, Art Unit 2855
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