DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Information Disclosure Statement
The information disclosure statements filed 09/18/2025 and 10/21/2025 fail to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 112
Claims 30-35, 40, and 42-44 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 30 recites “the gear motor”, which lacks antecedent basis in the claim.
Claim 31 recites “The arm part The arm portion according to claim 27”, which is unclear and appears to contain inadvertent grammatical errors.
Claim 32 recites “A robot arm with a first arm portion having a first portion longitudinal axis and a first gear motor, and an arm part according to claim 8”, where claim 8 has been cancelled and the intended structure cannot be ascertained. See further rejection under 35 USC 112(d) below.
In the interest of compact prosecution, the Examiner notes Claim 34 recites “the angular gear has a downshift starting from the driving element”, and the term “downshift” does not appear to be defined by the Specification in such a way that a person of ordinary skill in the art would understand the intended meaning of the claimed limitation.
In the interest of compact prosecution, the Examiner notes Claim 35 recites the “angular gear is designed as a bevel gear,” where the phrase “designed as” which is unclear because it is indiscernible if the phrasing imparts structure and/or function. The phrasing appears to describe the designers’ intentions or methodology rather than the invention’s structure or function.
In the interest of compact prosecution, the Examiner notes Claim 40 recites “an angular gear” then “the angular gear,” which is a double inclusion that is unclear in accordance with MPEP 2173.05(o).
In the interest of compact prosecution, the Examiner notes Claim 42 recites “the arrangement of the third arm portion relative to the fourth arm portion is designed in accordance with the arrangement of the second arm portion relative to the first arm portion,” which is generally unclear. First, the phrasing “designed” is unclear because it is indiscernible if the phrasing imparts structure and/or function, as noted above. Second, it is unclear what structure is required by claim, i.e., by the phrasing “designed in accordance with the arrangement”.
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Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 32-35, 40, and 42-44 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 32 depends from Claim 8, which is cancelled, and therefore does not meet the requirements of 35 U.S.C. 112(d).1 Claims 33-35, 40, and 42-44 inherit the deficiencies of Claim 32 by their respective dependencies.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claim 27 is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by (US 2011/0219906).
The current application is related to PCT/EP2023/052306 and the current claim 27 is substantially similar in scope to the corresponding PCT claims. The examiner adopts, and incorporates herein by reference, the explanations of the closest prior art as set forth in the PCT (see the copy of the translated PCT/ISA/237 listed/attached on the PTO Form 892).2
Claims 27-31 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Narita et al. (US 2004/0149064).
27. (new) An arm part for a robot arm, comprising: a second arm portion (any of A2-A7, e.g. A3) comprising: a second portion longitudinal axis (fig. 6); a second gear motor (M2); a third gear motor (M3, where M3 is unshown but is a repetition of shown M1); and a third arm portion (A4) adjoining the second arm portion (A3), comprising a fourth gear motor (M4, where M4 is unshown but is a repetition of shown M2),wherein the third arm portion (A4) is actuatable by means of the third gear motor (M3) about the second portion longitudinal axis relative to the second arm portion (fig. 6).
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28. (new) The arm part according to claim 27, characterized in that the second gear motor (M2) having a motor (M2), a transmission (33, 35) and a gear motor housing (fig. 6), a supporting structure of the arm portion (e.g., the portions of the gear motor housing within each arm segment forms “a supporting structure of the arm portion”) is formed at least in portions exclusively by the gear motor housing along the second portion longitudinal axis in the region of the gear motor housing.
29. (new) The arm part according to claim 27, characterized in that the second arm portion (e.g., A3) is straight (fig. 6).
30. (new) The arm part according to claim 27, characterized in that an output shaft (fig. 6; para. 33) of the gear motor (as best understood, M1) is arranged parallel to the second portion longitudinal axis (fig. 6).
31. (new) The arm part The arm portion according to claim 27, characterized in that an extension piece for extending the second arm portion and/or further functional modules (e.g., any other of A2-A7) can be arranged on the second arm portion along the second portion longitudinal axis (fig. 6).
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive. Applicant has argued (Remarks, page 10) that ‘Applicant’s “arm portion” is defined as the portion of a robot arm that is movable relative to another portion of the robot arm,” and cites, in support, the Specification which recites “[t]he arm portion is preferably understood to mean the portion of a robot arm that is movable relative to another portion of the robot arm.” This is not persuasive.
First, Examiner notes that the meaning of “arm portion” is broader than Applicant has argued and/or cited (e.g., “preferably”). The “arm portion” of the prior art meets the claimed limitations insomuch as the prior art’s “arm portion” can be any “arm portion” (for illustrative example, see mapping of any of A2-A7 or any combination of A2-A7, e.g., A2-A3, A2-A3-A4, A3-A4, of Narita).
Second, Examiner notes that as claimed, the “second arm portion” merely “compris[es]: … a second gear motor” and “third gear motor”, as well as “a third arm portion” and a “fourth gear motor.” However, there is no claimed structure (as only an illustrative example: a housing of the second arm portion, wherein the second/third gear motors are within the housing) which excludes the structure of the prior art, as mapped above. Further, the interpretation of the prior art has not been limited as Applicant has argued, especially since, as claimed, the “second arm portion” also comprises “a third arm portion” and “a fourth gear motor.” If Applicant has intended to claim the structure as argued, Examiner recommends amending as such.
Applicant’s arguments with respect to the remaining claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment (e.g., to include changes in dependency and/or amended language) 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 T. S. FIX whose telephone number is (571)272-8535. The examiner can normally be reached M-Th 10a-3p.
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, Minnah Seoh can be reached at 5712707778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T. SCOTT FIX/Primary Examiner, Art Unit 3618
1 MPEP 608.01(n): When examining a dependent claim, the examiner should determine whether the claim complies with 35 U.S.C. 112(d), which requires that dependent claims contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and include all the limitations of the previous claim. If the dependent claim does not comply with the requirements of 35 U.S.C. 112(d), the examiner should reject the dependent claim under 35 U.S.C. 112(d) as unpatentable rather than objecting to the claim. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with pre-AIA 35 U.S.C. 112, fourth paragraph (now 35 U.S.C. 112(d) )).
2 See MPEP 1893.03(e)(II) which permits the examiner to adopt any portion or all of any report on patentability of the IPEA or ISA that would be relevant to U.S. practice, e.g., explanations of prior art, etc.