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 .
Response to Amendment/Arguments
This office action is in response to applicant’s reply filed 12/2/25. Amended Claims 1, 4-14 are pending.
Regarding the previous specification objections, applicant’s remarks include (begin excerpt/):
PNG
media_image1.png
276
1096
media_image1.png
Greyscale
(/end excerpt)
The previous specification objections are overcome.
Regarding the previous drawing objections, applicant’s remarks include (begin excerpt/):
PNG
media_image2.png
1120
846
media_image2.png
Greyscale
(/end excerpt)
Applicant’s arguments have been fully considered. 94 designates a symbol. MPEP 608.02 quoting 37 CFR 1.84(n) states:
(n) Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
Symbol designated by 94 does not have a universally recognized conventional meaning. Symbol 16 similarly does not have a universally recognized conventional meaning. These symbols continue to raise issues. Regarding the claimed subject matter of Claims 9 and 12, applicant’s arguments have been fully considered but are not persuasive. No citations to the specification are used for the arguments. The argued motions for Claim 12 would appear to be new matter if the arguments were to be persuasive (e.g. no screw motion is present in original disclosure).
Regarding the previous claim objection, examiner notes applicant has amended claim 14.
Regarding the previous claim interpretations, applicant has amended the claim language.
Regarding the previous 112 rejections, applicant’s remarks concerning a “solid-state actuator” are noted and this rejection is withdrawn. Some of the previous 112(b) rejections have been overcome, some remain.
Regarding the previous prior art rejection by Harms, the amendments to the claim 1 have overcome this reference as anticipatory. Please see the following action for treatment of the amended claims.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Newly submitted claim 14 directed to an invention that lacks unity with the invention originally claimed for the following reasons: Claim 14 submitted 12/2/25 and Claims 1 and 14 submitted 3/27/24 lack unity of invention because even though the inventions of these groups require the technical feature of “the actuator device comprising a minimum of two working chambers which are coupled to one another in such a way that an increase in volume of a first of the working chambers is accompanied by a reduction in volume of the second working chamber and vice versa, a first discharge path to reduce the volume of the first working chamber, a second discharge path to reduce the volume of the second working chamber, a first valve element arranged in the first discharge path, a second valve element arranged in the second discharge path, and a drive unit moved by the respective increase in volume of the respective working chamber, wherein a portion of the fluid is branched off from the first flow path downstream of the pump device and upstream of the first working chamber and introduced into a first actuating path so that the portion of the fluid moves a second valve from the second closed position into the second open position, wherein a portion of the fluid is branched off from the second flow path downstream of the pump device and upstream of the second working chamber and introduced into a second actuating path so that the portion of the fluid moves a first valve from the first closed position into the first open position”, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Harms. Harms teaches “the actuator device comprising a minimum of two working chambers (116 and 126, Fig. 5) which are coupled to one another in such a way that an increase in volume of a first of the working chambers is accompanied by a reduction in volume of the second working chamber and vice versa, a first discharge path to reduce the volume of the first working chamber,
PNG
media_image3.png
660
1134
media_image3.png
Greyscale
a second discharge path to reduce the volume of the second working chamber,
PNG
media_image4.png
660
1134
media_image4.png
Greyscale
a first valve element (252 of 236) arranged in the first discharge path, a second valve element (246 of 240) arranged in the second discharge path, and a drive unit (with 108) moved by the respective increase in volume of the respective working chamber, wherein a portion of the fluid is branched off from the first flow path downstream of the pump device and upstream of the first working chamber and introduced into a first actuating path so that the portion of the fluid moves a second valve from the second closed position into the second open position (Fig. 5), wherein a portion of the fluid is branched off from the second flow path downstream of the pump device and upstream of the second working chamber and introduced into a second actuating path so that the portion of the fluid moves a first valve from the first closed position into the first open position (Fig. 5)”.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 14 withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawings are objected to because:
MPEP 608.02 IX states: “37 CFR 1.84(n) indicates that graphic drawing symbols and other labeled representations may be used for conventional elements where appropriate, subject to approval by the Office.” Symbol 94 in Fig. 2 is non-conventional and not understood.
MPEP 608.02 IX states: “37 CFR 1.84(n) indicates that graphic drawing symbols and other labeled representations may be used for conventional elements where appropriate, subject to approval by the Office.” Symbol 16 is non-conventional. The specification describes 16 as “a reservoir”. Reservoirs may be depicted for example as shown by symbol 4.1.2 in USA standard graphic symbols for fluid power diagrams (USAS Y32.10-1967):
PNG
media_image5.png
600
580
media_image5.png
Greyscale
The drawings filed 12/2/25 raise a question of structure. The piston 60 is described as actuating the valve element 50 with piston rod 66. However the depicted line for piston rod 66 also appears to be the hydraulic line for connection to discharge path 46. It may be there should be a piston rod and a hydraulic line. The same question is raised for the other set of valves.
PNG
media_image6.png
594
941
media_image6.png
Greyscale
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.
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 claimed subject matter of
Claim 9
Claim 12 (only “translationally” or “oscillatingly” are understood to be depicted, “rotationally” is not shown nor are the claimed combinations with “rotationally”)
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.
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:
“drive unit which can be moved by the respective increase in volume of the respective working chamber” in Claim 1 (interpreted as piston 22 and piston rod 24, p. 13)
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“the fluid conveyed by means of the solid-state actuator” in Claim 9
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Examiner additional notes of claim interpretation:
i. Claim 11 recites “a drive element” whereas a “drive unit” already claimed in Claim 1. “drive element” has been considered as continuing to invoke 112(f) for the same structure as the “drive unit” of Claim 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.
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 1-13 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 1 recites in part “the first valve operates in a first actuating region and a first actuating chamber which is at least partially and directly bounded by the first actuating region and into which the fluid flowing through the second actuation path can be introduced, so that the first actuating region can be acted upon by the fluid flowing through the second actuation path and introduced into the first actuating chamber; and wherein a first throttle is associated with the first actuating region and the first actuating chamber and is connected parallel to the first actuating chamber and the first actuating region in the flow direction of the fluid, and wherein the fluid can be discharged from the first actuating chamber via the first throttle in order to cause a movement of the first valve element from the first open position into the first closed position.”. This is indefinite. The metes and bounds of “region” are indefinite. How the “region” is acted upon is indefinite (“so that the first actuating region can be acted upon by the fluid flowing through the second actuation path and introduced into the first actuating chamber”). Claim 4 has similar language regarding a “second actuating” region and therefore the same issue.
Claim 7 is indefinite. Claim 7 presents a choice “a second non-return or check valve is arranged” then immediately limits this by reciting “whereby the non-return valve prevents...”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “a second non-return or check valve is arranged”, and the claim also recites “whereby the non-return valve prevents” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 9 recites the limitation "the valve device". There is insufficient antecedent basis for this limitation in the claim.
Claim 12 is indefinite. Claim 12 recites “The actuator device according to Claim 11, wherein the drive unit element can be moved translationally and/or rotationally and/or oscillatingly in the respective direction of movement relative to the housing.” The language is indefinite how the claimed various movements would occur (ex. simultaneous (“and”) rotationally movement and oscillatingly movement).
Claim 13 recites “wherein a freewheeling valve is associated with one of the working chambers.” This is indefinite. As best understood, applicant has disclosed a piston, not a wheel. A “freewheeling” valve is therefore not understood. It may be that the valve is a check valve providing makeup fluid, as the check valve 100 in Fig. 3 of applicant’s appears to be this.
Those claims not specifically mentioned above are rejected as being rendered indefinite by virtue of their dependence on an indefinite claim.
Conclusion
In view of the above noted 112(b) rejections and their compounding nature, a determination of allowability over prior art for the remaining claims could not be determined at this time. The absence of an art rejection is not an indication of allowable subject matter.
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 MICHAEL QUANDT whose telephone number is (571)272-1247. The examiner can normally be reached Monday-Thursday 10am-5pm.
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, NATHANIEL WIEHE can be reached at (571)272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MICHAEL QUANDT
Examiner
Art Unit 3745
/MICHAEL QUANDT/ Examiner, Art Unit 3745