DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office Action is responsive to the Applicant's communication filed 31 August 2026. In view of this communication, claims 1-16 are now pending in the application.
Response to Arguments
The Applicant’s arguments, filed 31 August 2026, have been fully considered but are not persuasive.
The Applicant’s first argument (pages 6-7 of the Remarks) alleges, regarding the previous grounds of rejection under 35 U.S.C. 112, that the lengths and widths of the patch and the track properly are enabled by the specification and implies that these “typical” and “traditional measurements” would have been clear. However, the claims were rejected for lacking proper written description, not enablement, and what would have been understood as typical or traditional is not the standard by which proper written description is determined. Thus, this argument is unpersuasive and said previous grounds of rejection are maintained. Additionally, the amendments to the specification and the drawings, adding the previously undescribed subject matter to the application, constitutes new matter.
The Applicant’s second argument (page 7 of the Remarks) alleges, regarding the previous grounds of rejection under 35 U.S.C. 102, that Hasegawa does not disclose a “linear” track because the track of Hasegawa extends in a spiral shape. However, the term “linear”, which has not been provided any special definition in the application, can be defined as “elongated with nearly parallel sides” (“Linear.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/linear. Accessed 5 Oct. 2026). Since the spiral track of Hasegawa meets this definition, as figure 4 clearly shows the track having elongated sides extending parallel to one another, Hasegawa does meet this new limitation. Thus, this argument is unpersuasive and said grounds of rejection are maintained.
The Applicant’s third argument (page 8 of the Remarks) alleges, regarding the previous grounds of rejection under 35 U.S.C. 103, that the remaining claims are allowable by virtue of their dependency on claim 1. This is unpersuasive for the same reasons given above.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), which papers have been placed of record in the file.
Disclosure
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The amendment filed 31 August 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The replacement drawings with added dimension lines disclose said dimensions in such detail that was not present in the application as originally filed.
The amendment to the specification, specifically new paragraph [0064], describes the elements added to the replacement drawings, including the added dimensions, which were not present in the application as originally filed.
The Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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.
Claim 1 recites the surface of said magnetic protrusion or patch having “a width dimension that aligns with a width of said track” and “a length dimension”, and the track having “a length dimension”. These limitations lack any explanation in the specification beyond the exact language used in the claims, nor are they shown in any of the drawings. As such, the claimed dimensions are not sufficiently described in the application as originally filed, making it impossible to determine to what dimensions the limitations are intended to refer, thus also rendering the claims indefinite.
Claims 2-16 are rejected due to their dependency on 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.
Claim(s) 1-16 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites the surface of said magnetic protrusion or patch having “a width dimension that aligns with a width of said track” and “a length dimension”, and the track having “a length dimension”. As stated above, it is impossible to determine to what dimensions the limitations are intended to refer, thus rendering the claims indefinite.
Claim 2 recites the limitation “said another direction”. There is insufficient antecedent basis for this limitation in the claims.
Claims 3-16 are rejected due to their dependency on claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-4, 6-7, 11, and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa et al. (US 5,881,649), hereinafter referred to as “Hasegawa”.
Regarding claim 1, Hasegawa discloses a device [1] for converting between motion in one direction and motion in another direction (fig. 2-4; col. 10, lines 7-22), said device [1] comprising:
a magnetic protrusion or patch [21] mounted on a first movable element [13] and comprising a surface [17] (fig. 2-4; col. 10, lines 7-22); and
a track [22] with predefined magnetic properties mounted on a further movable element [18] (fig. 4; col. 11, lines 12-44), said track [22] defining a pathway towards which said magnetic protrusion or patch [21] is attracted by magnetic forces (fig. 4; col. 13, lines 1-9),
PNG
media_image1.png
359
972
media_image1.png
Greyscale
said magnetic forces constraining said movable elements [13,18] to move such that said magnetic protrusion or patch [21] travels in a direction along said magnetic track [22] in response to relative movement between said first and further elements [13,18] (fig. 4; col. 13, lines 1-9);
wherein said surface [17] of said magnetic protrusion or patch [21] comprises a shape with a width dimension that aligns with a width of said track [22] and differs therefrom by less than 30% (fig. 1; the vertical width of 17 extends over approximately the same distance as the spiral magnets 22) and a length dimension perpendicular to said width dimension that is shorter than a length dimension of said track [22], being less than 30% of said length of said track [22] (fig. 4; the horizontal length of 17 is shown slightly less than the axial length of the further movable element 18, and since the track length is equal to said axial length multiplied by πd, i.e. the circumferential distance of the spiral magnet, the track length is at least 3.1415 times the length dimension of the surface), and
wherein said surface [17] of said magnetic protrusion or patch [21] is flat (fig. 4) and said track [22] is linear (fig. 4; the term “linear” is defined as “elongated with nearly parallel sides” - see “Linear.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/linear. Accessed 5 Oct. 2026 – and the track is shown having parallel sides), such that said surface [17] of said patch or protrusion [21] that faces said track [22] is in a plane that is parallel to a plane of a surface of said track [22] (fig. 4; the bottom surface of [17] and the top surfaces of [22] each extend along horizontal planes).
Regarding claim 2, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said motion in said one direction comprises rotational motion and said motion in said another direction comprises translational motion (fig. 4; col. 12, lines 50-56).
Regarding claim 3, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said magnetic protrusion or patch [21] comprises a magnet [21a,21b] with at least two poles facing said track [22] (fig. 2-4; col. 12, lines 23-56).
Regarding claim 4, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said magnetic protrusion or patch [21] comprises an axis perpendicular to said surface [17], and said magnetic protrusion or patch [21] is symmetrical about said axis or mounted so as be rotatable about said axis (fig. 4; the magnets [21a,21b] are symmetrically provided to the left and the right of the horizontal center line of the surface [17]).
Regarding claim 6, Hasegawa discloses the device [1] according to claim 3, as stated above, wherein said track [22] comprises at least two tracks such that each pole of said at least two pole magnet [21a,21b] faces a respective track [22] (fig. 2; col. 10, lines 23-38; separate tracks are provided on each of driving shafts 18A, 18B, and 18C).
Regarding claim 7, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said magnetic protrusion or patch [21] comprises a permanent magnet [21a,21b] (fig. 4; col. 12, lines 44-56).
Regarding claim 11, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said at least one track [22] with predefined magnetic properties is formed by {lithographic printing of} a high permeability material onto a low permeability substrate (fig. 4; col. 12, lines 44-56; permanent magnets 22 extend around the shafts 18 made of ferromagnetic material; the recited method of lithographic printing does not imply any additional structural limitations).
Regarding claim 13, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said further movable element [18] comprises a plurality of tracks [22], said plurality of tracks [22] defining different relative trajectories between said movable elements [18] (fig. 2; col. 10, lines 23-38; separate tracks are provided on each of driving shafts 18A, 18B, and 18C).
Regarding claim 14, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said device [1] comprises one of a cam follower or a scotch yoke (fig. 1-4; col. 7, lines 17-36; a cam follower is a component designed to convert rotary or oscillating motion into linear or reciprocating motion, as disclosed).
Regarding claim 15, Hasegawa discloses the device [1] according to claim 1, as stated above, an additional movable element [13] corresponding to said first movable element [13], said additional element [13] comprising a magnetic patch or protrusion [21] corresponding to said magnetic patch or protrusion [21] of said first movable element [13], said additional movable element [13] being mounted on an opposite side of said further movable element [18] to said first movable element [13] (fig. 1; there are three of each movable elements, the additional movable element [13] adjacent to 18C is arranged opposite, i.e. in the movement direction, to the movable element [13] adjacent to 18A).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa in view of Matsui et al. (US 6,140,723), hereinafter referred to as “Matsui”.
Regarding claim 8, Hasegawa discloses the device [1] according to claim 1, as stated above. Hasegawa does not disclose that said magnetic protrusion [21] comprises at least one electromagnet or at least one electro permanent magnet.
Matsui discloses a device comprising a magnetic protrusion [23] disposed on a movable element [22], wherein said magnetic protrusion [23] comprises at least one electromagnet or at least one electro permanent magnet (fig. 3-4; col. 5, lines 33-58).
PNG
media_image2.png
461
1084
media_image2.png
Greyscale
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the permanent magnets of Hasegawa with electromagnets as taught by Matsui, since Matsui teaches allowing for continuous adjustment of the movement speed by varying the magnetic force of the electromagnets thereby preventing the motor from being overloaded and damaged (col. 9, lines 1-19 of Matsui).
Regarding claim 9, Hasegawa, in view of Matsui, discloses the device [1] according to claim 8, as stated above, wherein Matsui further discloses that said device comprises a plurality of electromagnets or electro permanent magnets [23] mounted at different positions on said first movable element [22] (fig. 3; col. 4, lines 58-67), said device comprising control circuitry configured to activate one of said plurality of electromagnets or electro permanent magnets [23] at any one time, a selection of said one of said plurality of magnets [23] to be activated defining a trajectory of one of said movable elements [22] (col. 8, lines 19-33).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa.
Regarding claim 12, Hasegawa discloses the device [1] according to claim 1, as stated above, wherein said at least one track [22] with predefined magnetic properties has a thickness (fig. 2-4).
Hasegawa does not disclose the thickness being less than 3mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the track of Hasegawa having a thickness of less than 3mm, for the purpose of providing a more precise positioning of the first movable element, and since the only difference between the track of Hasegawa and the claimed track is a recitation of relative dimensions of the claimed device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa in view of Wheals et al. (GB 2448598 a), hereinafter referred to as “Wheals”.
Regarding claim 16, Hasegawa discloses the device [1] according to claim 1, as stated above. Hasegawa does not disclose that said device [1] further comprises a hermetic seal between said first and further element [13,18].
Wheals discloses a device comprising a magnetic protrusion or patch [26b,28b] located on a first movable element [22] and a track [26a,28a] mounted on a further movable element [24] (fig. 1; page 4, lines 4-26), wherein said device further comprises a hermetic seal between said first and further element [22,24] (fig. 1; page 4, lines 4-26; chamber 18 creates a vacuum seal around the first movable element, isolating it from the further movable element).
PNG
media_image3.png
426
642
media_image3.png
Greyscale
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the first and further movable elements of Hasegawa having a hermetic seal therebetween as taught by Wheals, in order to provide a vacuum surrounding one or both elements thereby reducing frictional losses and improving efficiency.
Allowable Subject Matter
Claim(s) 5 and 10 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 5, and all claims dependent thereon, the prior art does not disclose, inter alia, the device according to claim 3, wherein said magnetic protrusion or patch comprises a horseshoe magnet, and said magnet is mounted such that it is configured to rotate about an axis running perpendicular to said surfaces of said magnet facing said track and between said two magnetic poles.
Regarding claim 10, and all claims dependent thereon, the prior art does not disclose, inter alia, the device according to claim 9, wherein said first movable element comprises a rotatable disk and said plurality of electromagnets or electro permanent magnets are mounted at different radial positions on said rotatable disk.
While the prior art discloses various arrangements of magnetic protrusion or patch, it does not disclose said protrusion or patch comprising a horseshoe magnet rotating about an axis perpendicular to said magnet faces or comprising electromagnets or electro permanent magnets mounted at differing radial positions. Further, no evidence has been found as to why one of ordinary skill in the art would have been motivated to incorporate these features into the existing prior art. As such, the prior art neither anticipates nor renders obvious the inventions recited above.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Prior art:
Long (US 2007/0210659 A1) discloses a scotch yoke and cam follower arrangements for converting rotational movement into translational movement.
Vaden et al. (US 2007/0120432 A1) discloses a cam follower arrangement for converting rotational movement of a disk into translational movement of horseshoe magnets.
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trial-and-appeal-board/about-ptab/new-ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-program-independent. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final replay that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Andrews whose telephone number is (571)270-7554. The examiner can normally be reached on Monday-Thursday, 8:30am-3:00pm.
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, Oluseye Iwarere can be reached at 571-270-5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Michael Andrews/
Primary Examiner, Art Unit 2834
