DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
2. The amendment filed on October 9, 2024 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 entire contents of both applications are hereby incorporated herein by this reference.’ of lines 3-4 of the paragraph following CROSS REFERENCE TO RELATED APPLICATION on page 1 of the specification. The preliminary amendment filed on October 9, 2024 was not filed on the international filing date of this application: April 5, 2023.
See MPEP 714.01(e) sixth paragraph: A preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. 371 is not part of the original disclosure under 37 CFR 1.115(a) because it was not present on the international filing date accorded to the application under PCT Article 11.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
3. Claim 1 is objected to because of the following informalities: on line 12 it appears that ‘the processing unit’ should read -the electronic processing unit. Appropriate correction is required. Claims 2-19 are objected to by virtue of their dependency.
4. Claim 16 is objected to because of the following informalities: on line 7 it appears that ‘the processing unit’ should read -the electronic processing unit. Appropriate correction is required. Claims 17-19 are objected to by virtue of their dependency.
5. Claim 18 is objected to because of the following informalities: on line 12 ‘at least one types of plug socket’ should read -at least one type of plug socket-. Appropriate correction is required.
6. Claim 19 is objected to because of the following informalities: on line 9 ‘evaluatrion’ should read -evaluation-. Appropriate correction is required.
Claim Interpretation
7. 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.
8. 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.
9. 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: fastening device in claim 6 and fastening elements in claim 9.
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.
Claim Rejections - 35 USC § 112
10. 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.
11. Claims 1-19 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.
Claims 1-19 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.
In addition, claim 1 recites the limitations ‘the optical, contactless scanning’ in line 1, ‘the path direction’ in line 7, ‘the signals’ in line 8, and ‘the electrical lines’ in lines 15-16. There is insufficient antecedent basis for these limitations in the claim.
Claims 2-19 are rejected by virtue of their dependency from claim 1.
In addition, claim 3 recites the limitations ‘the axial head direction’ in line 3, ‘the side’ in lines 3-4, and ‘the axial direction’ in line 4. There is insufficient antecedent basis for these limitations in the claim.
In addition, claim 4 recites the limitations ‘the length’ in line 3, ‘the axial distance direction’ in lines 3-4, ‘the length’ in lines 4-5, ‘the greatest thickness’ in line 7, and ‘the greatest thickness’ in line 8. There is insufficient antecedent basis for these limitations in the claim.
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 4 recites the broad recitation ‘less than the greatest thickness of the head housing (line 8)’, and claim 4 also recites ‘in particular is less than 0.7 times this thickness (line 9)’ 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.
In addition, claim 5 recites the limitations ‘the front end’ in line 4, ‘the rear end’ in line 4, ‘the rear end wall’ in line 5, and ‘the flange ring’ in line 15. There is insufficient antecedent basis for these limitations in the claim.
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 5 recites the broad recitation ‘projecting rearwards from the evaluation housing (line 11)’, and claim 5 also recites ‘in particular from the flange plate (line 11-12)’ 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.
In addition, claim 6 recites the limitations ‘the strain relief device’ in line 3 and ‘the longitudinal direction’ in lines 3-4. There is insufficient antecedent basis for these limitations in the claim.
In addition, claim 7 recites the limitations ‘the rear end wall’ in line 3, ‘the circumferential wall’ in line 5, and ‘the axial direction’ in lines 6-7. There is insufficient antecedent basis for these limitations in the claim.
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 ‘arranged in the circumferential wall of the evaluation housing (line 3)’, and claim 7 also recites ‘in particular located behind one another or spaced apart from one another in the axial direction (lines 6-7)’ 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.
In addition, claim 8 recites the limitations ‘the electrical signal lines’ in line 2 and ‘the line’ in line 3. There is insufficient antecedent basis for these limitations in the claim.
In addition, claim 9 recites the limitations ‘the fastening elements’ in line 2, ‘the longitudinal direction’ in lines 5-6, ‘the region’ in line 6, and ‘the contact surface’ in line 6. There is insufficient antecedent basis for these limitations in the claim.
In addition, claim 10 recites the limitations ‘the side’ in line 3, ‘the front’ in line 4, and ‘the contact axial head end region’ in line 7. There is insufficient antecedent basis for these limitations in the claim.
In addition, claim 11 recites the limitations ‘the more forwardly projecting head end region’ in lines 2-3 and ‘the set-back head end region’ in line 4. There is insufficient antecedent basis for these limitations in the claim.
In addition, claim 12 recites the limitations ‘the axial direction’ in line 4, ‘the optical system’ in line 4, and ‘the narrowing end region’ in line 6. There is insufficient antecedent basis for these limitations in the claim.
In addition, claim 14 recites the limitations ‘the objective lens’ in line 3, ‘the free end side’ in line 3, ‘the end region’ in lines 3-4, and ‘the reflected light’ in line 6. There is insufficient antecedent basis for these limitations in the claim.
As for the remaining claims 13 and 15-19, please see above (Claims 1-19 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).
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: please refer to the attached PTO-892. Due to the indefinite nature of claims 1-19, the examiner has not made any rejections of these claims under 35 USC 102/103, but the claims appear to be at the minimum obvious over the references cited on the attached PTO-892.
Fax/Telephone Numbers
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gordon J. Stock, Jr. whose telephone number is (571) 272-2431.
The examiner can normally be reached on Monday-Friday, 10:00 a.m. - 6:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Kara Geisel, can be reached at 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GORDON J STOCK JR/
Primary Examiner, Art Unit 2877
