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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on August 23, 2024, September 9, 2024, September 25, 2024, October 1, 2024, October 15, 2024, November 11, 2024, November 12, 2024, January 6, 2025, February 10, 2025, March 6, 2025, March 26, 2025, May 14, 2025, June 24, 2025, August 19, 2025, September 10, 2025, September 18, 2025, October 8, 2025, December 12, 2025 and January 26, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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.
Currently, no claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 14-20 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. Any remaining claims are rejected based on their dependency to a rejected base claim.
Claim 14, discloses that, “the short side of one link being pairable with the long side of an adjacent link to form a straight portion of the arm, the short side of the one link also being pairable with the long side of the adjacent link to form a bend in the arm.” However, it is unclear how the short side can be paired with the long side to form both the straight portion and the bend. In other words, how can the same sides be paired together in order to form the straight portion and the bend. Did the applicant mean to disclose that, “the short side of the one link also being pairable with the short side of the adjacent link to form a bend in the arm? In order to expedite prosecution, the examiner has interpreted this limitation as disclosing that, “the short side of one link being pairable with the long side of an adjacent link to form a straight portion of the arm, the short side of the one link also being pairable with the short side of the adjacent link to form a bend in the arm.” However, further clarification is respectfully requested.
Claim 14 also recites the limitation "the same geometry" in Line 4. There is insufficient antecedent basis for this limitation in the claim. In order to expedite prosecution, the examiner has interpreted this limitation as disclosing, “a same geometry”. However, further clarification is respectfully requested.
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.
Claims 8-15, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Utaki (6941974).
In reference to claim 8, Utaki discloses an assembly for use with a selectively flexible extension tool, the assembly comprising: a plurality of links (10) to be coupled together to form an arm of a selectively flexible extension tool (Figure 1), the plurality of links defining a circumferential direction (i.e. formed as the outer surface encircling each element 10, see figure below) and a longitudinal direction (see dotted line in the figure below) and including a first link (10) and a second link (another element 10), the first link and the second link including a short side (see figure below) at a first circumferential position (i.e. an upper circumferential position in the figure below) along the circumferential direction, the short side defining a short side length along the longitudinal direction (see figure below), the first link and the second link also including a long side (see figure below) at a second circumferential position (i.e. a lower circumferential position in the figure below) along the circumferential direction the long side defining a long side length along the longitudinal direction (see figure below), the short side length less than the long side length (see figure below), wherein pairing the first link and the second link in a first position (see figure below) relative to each other to form the arm forms a first shape (i.e. straight shape) and pairing the first link and the second link relative to each other in a second position (see figure below) to form the arm forms a second shape (i.e. bent shape) that is different from the first shape (see figure below).
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In reference to claim 9, Utaki discloses that the first link defines a first geometry (i.e. a polygonal shape geometry) and the second link defines a second geometry (i.e. the same polygonal shape geometry), and wherein the first geometry and the second geometry are substantially the same (Figure 1).
In reference to claim 10, Utaki discloses that, wherein, in the first position, the short side of one link of the plurality of links is paired with the long side (at least through the connection of parts) of a link adjacent to the one link to form straight portion of the arm (see figure above).
In reference to claim 11, Utaki discloses that, wherein, in the second position, the short side of one link of the plurality of links with the short side of a link adjacent to the one link to form a bend of the arm (see figure above).
In reference to claims 12 and 19, Utaki discloses that, each of the plurality of links includes a circumferential wall (i.e. at 14 in Figure 2), the circumferential wall defining at least one lengthwise opening (15) extending through circumferential wall to receive a line (20) of a line assembly associated with the arm.
In reference to claim 13, Utaki discloses that each of the plurality of links includes a forward end (i.e. right end of 10 in Figure 2) and an aft end (i.e. left end of 10 in Figure 2) along the longitudinal direction, the first link and the second link including a first interface geometry (i.e. flat face) at the forward end and a second interface geometry (i.e. flat face) complementary to the first interface geometry at the aft end, and wherein the first interface geometry of the first link is the same as the first interface geometry of the second link, and wherein the second interface geometry of the second link is the same as the second interface geometry of the second link (Figure 2).
In reference to claim 14, As Best Understood, Utaki discloses a kit for constructing an arm for a selectively flexible extension tool having a customizable shape, the kit comprising: a plurality of links (10) to be arranged sequentially to define an arm having a three-dimensional shape (Figure 1), each of the plurality of links having a same geometry (Figures 1-3), each of the plurality of links having a short side (see figure previously shown above) and a long side (see figure previously shown above), the short side of one link being pairable with the long side of an adjacent link (at least through the connection of parts) to form a straight portion of the arm (see figure previously shown above), the short side of the one link also being pairable with the short side of the adjacent link to form a bend in the arm (see figure previously shown above).
In reference to claim 15, Utaki discloses that the arm is formed in a particular three-dimensional shape and length by arranging the plurality of links sequentially in a particular manner and circumferential orientation (Figure 1).
In reference to claim 20, Utaki discloses that each of the plurality of links include interface geometries (flat faces) that engage adjacent links to form kinematic mounts between the plurality of links in the arm that restrict motion of the arm in all degrees of freedom.
Claim Rejections - 35 USC § 103
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 18, is rejected under 35 U.S.C. 103 as being unpatentable over Utaki (6941974) in view of Kim et al. (2013/0312564).
In reference to claim 18, Utaki discloses the claimed invention as previously mentioned above, but lacks,
each of the plurality of links have a first interface geometry at a fore end and a second interface geometry at an aft end, the first interface geometry comprising at least two extension members spaced along a circumference of the fore end, the second interface geometry comprising at least two indentations corresponding in shape to the at least two extension members.
However, Kim et al. teach that it is old and well known in the art at the time the invention was made to provide a plurality of links (210, Figure 9c) have a first interface geometry (214) at a fore end and a second interface geometry (space between adjacent teeth 216) at an aft end, the first interface geometry comprising at least two extension members (i.e. teeth) spaced along a circumference of the fore end (Figure 9b), the second interface geometry comprising at least two indentations (space between adjacent teeth 216) corresponding in shape to the at least two extension members (Figure 9c).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the first and second interface geometries of the plurality of links, of Utaki, with the known technique of providing a plurality of links including the first and second geometries, as taught by Kim et al., and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that prevents slip from occurring during pivoting of the links (paragraph 94).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 12194620.
In reference to claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses an assembly for use with a selectively flexible extension tool, the assembly comprising: a plurality of links to be sequentially arranged to form an arm of a selectively flexible extension tool, the plurality of links defining a longitudinal direction and a circumferential direction, each of the plurality of links having the same geometry and having a short side at a first circumferential position along the circumferential direction and a long side at a second circumferential position along the circumferential direction, wherein pairing two links of the plurality of links in a first position relative to each other along the circumferential direction forms the arm in a first shape, and wherein pairing the two links in a second position relative to each other along the circumferential direction forms the arm in a second shape that is different from the first shape (see claim 40).
In reference to claims 2, 3, 10, 11 and 14, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses the short side paired with the long side to form a shape (claim 40) and the short side being paired with another short side to form a different shape (note these shapes could be any shapes).
In reference to claims 4, 12 and 19, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that each of the plurality of links includes a circumferential wall, the circumferential wall defining at least one lengthwise opening extending through circumferential wall to receive a line of a line assembly associated with the selectively flexible extension tool (see claim 24).
In reference to claim 5, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that each of the plurality of links includes a forward end and an aft end along the longitudinal direction, each of the plurality of links including a first interface geometry at the forward end and a second interface geometry at the aft end, the second interface geometry being complementary to the first interface geometry (see claim 1).
In reference to claim 6, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that the first interface geometry and the second interface geometry form kinematic mounts between the plurality of links to couple the plurality of links together to form the arm (see claim 1).
In reference to claim 7, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that the first interface geometry includes at least three extension members spaced along the circumferential direction, and wherein the second interface geometry includes at least three indentations for receiving the at least three extension members, the at least three indentations have a shape corresponding to a shape of the at least three extension members (see claim 7).
In reference to claim 8, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses an assembly for use with a selectively flexible extension tool, the assembly comprising: a plurality of links to be coupled together to form an arm of a selectively flexible extension tool, the plurality of links defining a circumferential direction and a longitudinal direction and including a first link and a second link, the first link and the second link including a short side at a first circumferential position along the circumferential direction, the short side defining a short side length along the longitudinal direction, the first link and the second link also including a long side at a second circumferential position along the circumferential direction the long side defining a long side length along the longitudinal direction, the short side length less than the long side length, wherein pairing the first link and the second link in a first position relative to each other to form the arm forms a first shape and pairing the first link and the second link relative to each other in a second position to form the arm forms a second shape that is different from the first shape (see claim 40).
In reference to claim 9, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that the first link defines a first geometry and the second link defines a second geometry, and wherein the first geometry and the second geometry are substantially the same (see claim 4).
In reference to claim 13, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that each of the plurality of links includes a forward end and an aft end along the longitudinal direction, the first link and the second link including a first interface geometry at the forward end and a second interface geometry complementary to the first interface geometry at the aft end, and wherein the first interface geometry of the first link is the same as the first interface geometry of the second link, and wherein the second interface geometry of the second link is the same as the second interface geometry of the second link (see claims 1 and 7).
In reference to claim 15, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that the arm is formed in a particular three-dimensional shape and length by arranging the plurality of links sequentially in a particular manner and circumferential orientation (see claim 40).
In reference to claim 16, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that a change in relative circumferential orientation of adjacent links when arranged sequentially to define the arm changes the three-dimensional shape of the arm (see claim 40).
In reference to claim 17, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that the plurality of links define a first three-dimensional shape when the plurality of links are positioned in a first circumferential orientation relative to each other, and wherein the plurality of links define a second three-dimensional shape when the plurality of links are positioned in a second circumferential position relative to each other (see claim 40).
In reference to claim 18, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that each of the plurality of links have a first interface geometry at a fore end and a second interface geometry at an aft end, the first interface geometry comprising at least two extension members spaced along a circumference of the fore end, the second interface geometry comprising at least two indentations corresponding in shape to the at least two extension members (see claim 6).
In reference to claim 20, although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12194620 discloses that
each of the plurality of links include interface geometries that engage adjacent links to form kinematic mounts between the plurality of links in the arm that restrict motion of the arm in all degrees of freedom (see claim 1).
Claims 2, 3, 10, 11 and 14 are also rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 12194620 in view of Utaki (6941974).
In further reference to claims 2, 3, 10, 11 and 14, assuming arguendo, that U.S. Patent No. 12194620 does not explicitly disclose that,
in the first position, the short side of one link of the two links is paired with the long side of the other of the two links to form a straight portion of the arm; and
in the second position, the short side of one link of the two links with the short side of the other of the two links to form a bend of the arm.
However, Utaki teach that it is old and well known in the art at the time the invention was made to provide that in the first position, the short side of one link of the plurality of links is paired with the long side (at least through the connection of parts) of a link adjacent to the one link to form straight portion of the arm (see figure above), and in the second position, the short side of one link of the plurality of links with the short side of a link adjacent to the one link to form a bend of the arm (see figure above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the pairing of the short and long sides, of U.S. Patent No. 12194620, with the known technique of pairing short and long sides to form straight and bent portions, as taught by Utaki, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device having high endurance and reliability and having no breakage of a flexible-shaped member at all, can be obtained (Column 3, Lines 4-6).
Allowable Subject Matter
Claims 1-7 would be allowable when the nonstatutory double patenting rejection has been properly overcome by the filing of a Terminal Disclaimer.
Claims 16 and 17 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 and when the nonstatutory double patenting rejection has been properly overcome by the filing of a Terminal Disclaimer.
The following is an examiner's statement of reasons for allowance: The present invention pertains to a tool. It is the examiner's opinion that the art of record considered as a whole, alone or in combination, neither anticipates nor renders obvious of; pairing two links of the plurality of links in a first position relative to each other along the circumferential direction forms the arm in a first shape, and wherein pairing the two links in a second position relative to each other along the circumferential direction forms the arm in a second shape that is different from the first shape (as in claim 1), nor renders obvious of; a change in relative circumferential orientation of adjacent links when arranged sequentially to define the arm changes the three-dimensional shape of the arm (as in claim 16); nor renders obvious of; defining a first three-dimensional shape when the plurality of links are positioned in a first circumferential orientation relative to each other, and wherein the plurality of links define a second three-dimensional shape when the plurality of links are positioned in a second circumferential position relative to each other (as in claim 17), together in combination with the rest of the limitations of the independent claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hadden (4625936) also shows that it is known to provide links with various extension members (86, Figures 18 and 19).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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