DETAILED ACTION
for
METHOD OF MOUNTING A ROTARY SCALE MEMBER
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/18/2024, 01/08/2025, 04/07/2025, 05/29/2025, 06/30/2025, 10/17/2025, 11/05/2025, 04/02/2026, 05/13/2026, 05/13/2026 and 09/02/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Oath/Declaration
The Oath/Declaration submitted on 09/18/2024 is noted by the Examiner.
Drawings
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 "resiliently compliant members, in claims 6-7 and 12, 18-19, 21-25, 27-28 and 31" 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.
Specification
The disclosure is objected to because of the following informalities:
The “resiliently compliant members” does not have a corresponding reference number in the specification.
Appropriate correction is required.
The disclosure is objected to because of the following informalities:
At page 2, line 2, numeral 4 is referred as "rotary scale member”, however, at line 4, numerals 4 and is also referred to as “disc scale member”.
Applicants are advised to use consistent numbering and using the same name for each element throughout the specification and drawing.
Upon review of the specification, the Examiner noticed that the specification may include a number of similar naming errors. Applicant is advised to check the specification thoroughly for similar issues.
Appropriate correction is required.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are made.
The following title is suggested: Method Of Mounting A Rotary Scale Member Involves Manipulating Radial Configuration Of Scale-positioning Elements Until Desired Configuration Of Elements With Respect To Axis Of Rotation Is Achieved.
Claim Objections
Claims 1, 8, 12, 21, 26-27 and 31 are objected to because of the following informalities:
Claim 1, claim line 4: replace “a scale that extends around a scale axis is or can be provided” with -- a scale that extends around a scale axis is
Claim 8, claim line 2: replace “at at least two annularly spaced locations around the axis of rotation” with --
Claim 8, claim line 4: replace “at least one of which can be manipulated independently” with -- at least one of which is
Claim 9, claim line 3: replace “at at least three annularly spaced locations around the axis of rotation” with --
Claim 10, claim line 3: replace “a substantially circular surface for receiving the rotary scale member” with -- a circular surface for receiving the rotary scale member — to avoid 35 USC § 112(b) Claim Rejection.
Claim 11, claim line 4: replace “the scale axis and axis of rotation of the part are substantially co-axial” with --the scale axis and axis of rotation of the part are co-axial — to avoid 35 USC § 112(b) Claim Rejection.
Claim 12, claim line 4: replace “a scale that extends around a scale axis is or can be provided” with -- a scale that extends around a scale axis is
Claim 21, claim line 8: replace “a series of scale features defining a scale that extends around a scale axis is or can be provided” with -- a series of scale features defining a scale that extends around a scale axis is
Claim 26, claim line 2: replace “the rotary scale member can be fitted to one or more intermediate scale-positioning members” with -- the rotary scale member is
Claim 27, claim line 4: replace “a scale that extends around a scale axis is or can be provided” with -- a scale that extends around a scale axis is
Claim 31, claim line 3: replace “a scale axis is or can be provided” with -- a scale that extends around a scale axis is
Claim 31, claim line 7: replace “at least one of the one or more intermediate scale-positioning members can be manipulated” with -- at least one of the one or more intermediate scale-positioning members is
Claim 31, claim line 11: replace “the rotary scale member can engage such that the rotary scale member” with -- the rotary scale member being .
Appropriate correction is required.
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 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: [means for securing in claim 21 and means for securing in claim 31].
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.
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 (i.e., changing from AIA to pre-AIA ) 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-11 and 21-26 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Renishaw et al. (WO 2004/008076).
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Regarding claim 1, Renishaw discloses a method of mounting a rotary scale member on a first part of an apparatus, wherein the first part and a second part of the apparatus are relatively rotatable about an axis of rotation, the rotary scale member (see abstract) having a body on which a series of scale features defining a scale that extends around a scale axis being provided (Fig. 7), the method having mounting on the first part (10) the intermediate scale-positioning members (24) and manipulating the radial configuration of the intermediate scale-positioning members (24) until a desired radial configuration of the scale-positioning intermediate scale-positioning members (24) with respect to the axis of rotation is achieved (Page 6, lines 18-26); and fitting the rotary scale member (12) onto the intermediate scale-positioning members (24), the body of the rotary scale member (12) being radially located at a default radial location with respect to the intermediate scale-positioning members (24).
Regarding claim 2, Renishaw further discloses securing the body of the rotary scale member (12) to fix its radial location with respect to the part (see annotated Fig. 7 above).
Regarding claim 4, Renishaw further discloses checking the radial configuration of the intermediate scale-positioning members (Page 7, lines 4-9).
Regarding claim 5, Renishaw further discloses checking is determining the position of a part of the intermediate scale-positioning members (24) in order to determine the radial configuration thereof (Fig. 4; Page 6, lines 29-33).
Regarding claim 6, Renishaw further discloses the rotary scale member (12) being fitted to the intermediate scale-positioning members (24) via the resiliently compliant members (16).
Regarding claim 7, Renishaw further discloses force-fitting the rotary scale member (12) and the intermediate scale-positioning member together, the resiliently compliant members (16) are displaced and thereby urge the rotary scale member (12) via a reaction force into engagement with the intermediate scale-positioning members (24), the body of the rotary scale member (12) being thereby radially located at the default radial location with respect to the intermediate scale-positioning members (24).
Regarding claim 8, Renishaw further discloses arranging on the part, at least two annularly spaced locations around the axis of rotation, separate intermediate scale-positioning members (24), the radial configuration of at least one of which can be manipulated independently of the other(s).
Regarding claim 9, Renishaw further discloses arranging on the part a unitary intermediate scale-positioning member (24), at least three annularly spaced locations around the axis of rotation, a surface for receiving the rotary scale member (12).
Regarding claim 10, Renishaw further discloses the unitary intermediate scale-positioning member having an annular intermediate scale-positioning member (24) having a circular surface for receiving the rotary scale member (12).
Regarding claim 11, Renishaw further discloses the desired radial configuration of the intermediate scale-positioning members (24) is that configuration which ensures that when the rotary scale member is fitted, the scale axis and axis (A) of rotation of the part are co-axial.
Regarding claim 21, Renishaw discloses intermediate scale-positioning members (24) configured for mounting on a first part (10) of a device having the first part and a second part which are relatively rotatable about an axis (A) of rotation, the radial configuration of the intermediate scale-positioning members being manipulable with respect to the axis (A) of rotation; a rotary scale member (12) having a body on which a series of scale features (14) defining a scale that extends around a scale axis is provided (Fig. 1), the rotary scale member (12) being fittable to the intermediate scale-positioning members, the radial position of the rotary scale member (12) with respect to the axis of rotation being controlled by the intermediate scale-positioning members (24), the rotary scale member (12) being fittable to the intermediate scale-positioning members (24) via the resiliently compliant members (16) which are configured to radially locate the rotary scale member (12) at a default radial location with respect to the intermediate scale-positioning members (24) when the rotary scale member (12) being fitted to the intermediate scale-positioning members (24); and securing the rotary scale member (12) to the first part (10) independently the intermediate scale-positioning members (24), the radial location of the body of the rotary scale member (12) being maintained after removal of the intermediate scale-positioning members (24).
Regarding claim 22, Renishaw further discloses the rotary scale member (12) being fittable to the intermediate scale-positioning members (24) via at least three resiliently compliant members (16), located at different positions around the scale axis (Fig. 3).
Regarding claim 23, Renishaw further discloses the resiliently compliant members (16) having flexures (Fig. 2).
Regarding claim 24, Renishaw further discloses the rotary scale member (12) having the resiliently compliant members (16; Fig. 2).
Regarding claim 25, Renishaw further discloses the intermediate scale-positioning members (24) have the resiliently compliant members (16) to which the rotary scale member (12) being fitted.
Regarding claim 26, Renishaw further discloses the rotary scale member (12) being fitted to the intermediate scale-positioning members (24) already mounted on the first part of the device (Fig. 7).
Allowable Subject Matter
Claims 3, 12-20 and 27-31 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: a method of mounting a rotary scale member on a first part of an apparatus, wherein the first part and a second part of the apparatus are relatively rotatable about an axis of rotation, the rotary scale member involving mounting intermediate scale-positioning elements on a rotatable machine part and manipulating radial configuration of the intermediate scale-positioning elements until desired radial configuration of the intermediate scale-positioning members with respect to an axis of rotation being achieved, a rotary scale is fitted onto the intermediate scale-positioning elements, a body of the rotary scale is radially located at a default radial location with respect to the intermediate scale-positioning elements, the body of the rotary scale is secured to fix the radial location with respect to the part, removing the intermediate scale-positioning members.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDI N HOPKINS whose telephone number is (571)270-7042. The examiner can normally be reached M & F 9-5 and T-TH, 6-4.
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/BRANDI N HOPKINS/Primary Examiner, Art Unit 2855
