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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1 and 17-28, drawn to a robot arm with a sealing arrangement.
Group II, claim 29, drawn to use of a sealing arrangement with a robot arm.
Group III, claim 30, drawn to a sealing arrangement for a robot arm.
Group IV, claim 31, drawn to a method for sealing between links of a robot arm.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-IV lack unity of invention because even though the inventions of these groups require the technical feature of a sealing arrangement having a seal support and an elastic seal for sealing the radial gap between two links of a robot arm, which are connected to one another in a joint so as to be rotatable relative to one another about the rotational axis (D), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Peterson et al. (US 4,678,952). Peterson discloses a sealing arrangement having a seal support (33) and an elastic seal (29) for sealing the radial gap between two links of a robot arm (as seen in Figs. 4, etc.), which are connected to one another in a joint so as to be rotatable relative to one another about the rotational axis (D) (as seen in Figs. 4, etc.). Additionally see the 102 rejection of claim 1 below that also teaches each of the limitations in common are known in the art, and thus cannot be considered a special technical feature.
During a telephone conversation with David Dorton on 16 January 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1 and 17-28. Affirmation of this election must be made by applicant in replying to this Office action. Claims 29-31 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
The information disclosure statements filed 11 November 2024 fails 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.
Specifically the German Patent Office Examination Report is not in English and thus has not been considered. Please file an English translation, or a concise explanation of relevance.
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 seal support arranged on an outer side of the one link (claim 20), the seal arranged on the outer side of the other link (claim 22), and the link being a multi-part metal component, the seal support being a multi-part metal component, and the seal being a multi-part plastic component (claim 25) 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.
Claim Objections
Claim 1 is objected to because of the following informalities: “Robot arm” in line 1 should read “A robot arm”, and “this link” in line 5 should read “the one link. Appropriate correction is required.
Claims 17-28 are objected to because of the following informalities: the preamble should read “The robot arm”, and the transitional phrase should read “wherein” instead of “characterized in that”. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: “plastics” in line 4 should read “plastic”. Appropriate correction is required.
Claim 28 is objected to because of the following informalities: “the sealing” in line 2 should read “sealing”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claims 20, 22, and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 20 recites the limitation “the seal support is arranged on an outer side of the one link”. Though this limitation has literal antecedent basis it was not sufficiently 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. Specifically as the specification fails to disclose any other details relating to such (e.g. how/where it is on the outer side of the one link, whether or not it can/cannot have the same disclosed shape as the illustrated embodiment, etc.) it fails to meet the written description requirement. Appropriate correction is required. Examiner recommends Applicant cancel this claim.
Claim 22 recites the limitation “the seal is arranged on an outer side of the other link”. Though this limitation has literal antecedent basis it was not sufficiently 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. Specifically as the specification fails to disclose any other details relating to such (e.g. how/where it is on the outer side of the other link, whether or not it can/cannot have the same disclosed shape as the illustrated embodiment, etc.) it fails to meet the written description requirement. Appropriate correction is required. Examiner recommends Applicant cancel this claim.
Claim 25 recites the limitations “multi-part” with reference to the one line, the seal support, and the seal. Though these limitations have literal antecedent basis they were not sufficiently 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. Specifically as the specification fails to disclose any other details relating to such (e.g. how many parts they are made of, how the multiple parts are arranged (i.e. how are these elements divided into multiple parts?), whether or not they are the same or different materials, if the parts have the same shape as those disclosed in the illustrated embodiment, etc.) it fails to meet the written description requirement. Appropriate correction is required. Examiner recommends Applicant cancel the “multi-part” recitations from this claim.
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 1 and 17-28 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 1 recites the limitations “on the one hand” and “on the other hand” in lines 5 and 6. These limitations are indefinite as it is unclear if they are a structural limitation relating to how the seal support is supported (e.g. is this intended to be a reference to two different sides of the seal support?), or if such is merely used as a colloquial expression essentially meaning “and”. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to delete these expressions.
Claim 24 recites the limitations “in particular a groove” and “in particular axially secured”. These limitations are indefinite as it is unclear if they are limiting or not (e.g. are they merely an example of what the radial recess and the supported limitations can be, or are they required for infringement/anticipation to occur?). Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to delete these expressions.
Claim 28 recites the limitation “meets at least protection class IP5 and/or IP54”. This limitation is indefinite for several reasons. First, as this appears to be a standard with apparent reference to IEC 60529/EN 60529 it is unclear which revision version of the code was used and thus unclear exactly what would anticipate/infringe on such. Second, it is unclear what IP5 is as IP ratings according to IEC/EN 60529 appear to require two numbers after the “IP” and thus it is unclear what IP5 refers to (e.g. IP5X, IP50, IP05, IPX5, etc.). Third, it is unclear how it can have an IP rating of two IP values (as per IEC/EN 60529 it would appear it would only have the higher rated value). Appropriate clarification and correction is required. As the specification does not make clear which revision of EN60529 was used (and as ISO 20653 appears to only apply to vehicles) the device was tested under, for examination purposes Examiner assumes Applicant intended to claim “provides ingress protection against water and dust”.
Claims 17-27 are indefinite at least by virtue of depending on indefinite claim 1 above.
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)(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 1, 17-25, and 28, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peterson et al. (US 4,678,952).
With regard to claim 1, Peterson discloses a robot arm (as seen in Fig. 5) having at least two links (11 and 13), which are connected to one another in a joint (as seen in Fig. 4) so as to be rotatable relative to each other about a rotational axis (i.e. the central longitudinal axis in Fig. 4), and a sealing arrangement (comprising 33 and 27) having a seal support (33), which is attached to one of the two links (as seen in Fig. 4), and an elastic seal (27), which, in order to seal a radial gap (as seen between 35 and 37) between this link (13) and the other (11) of the two links (as seen in Fig. 4), is supported on the one hand on the seal support (i.e. at least on its radial outer side) and on the other hand on the other link (11).
With regard to claim 17, Peterson discloses that the seal support is attached to the one link in a frictionally, positively and/or integrally locking manner (as seen in Fig. 4 by the threaded engagement at 35).
With regard to claim 18, Peterson discloses that the seal support is attached in a radial recess (i.e. the recessed counter bore portion proximate 35 as seen in Fig. 4) of a wall (i.e. the wall of 13 proximate 35) of the one link (as seen in Fig. 4) and/or there is an interference fit between the seal support and the one link (as seen in Fig. 4 the threaded engagement shown is a type of interference fit).
With regard to claim 19, Peterson discloses that the seal support is arranged on an inner side of the one link (i.e. as seen in Fig. 4 it is on an inner radial facing surface thereof).
With regard to claim 20, Peterson discloses that the seal support is arranged on an outer side of the one link (i.e. as seen in Fig. 4 as part of the support is on an axial outer facing surface thereof).
With regard to claim 21, Peterson discloses that the seal is arranged on an inner side of the other link (as seen in Fig. 4 as it is at a portion that is inside with respect to the outermost surface of 11).
With regard to claim 22, Peterson discloses that the seal is arranged on an outer side of the other link (i.e. as seen in Fig. 4 as it is on a radially outward facing surface thereof that it radially outside of other parts thereof).
With regard to claim 23, Peterson discloses that the seal is supported in a radial recess (i.e. the notch seen in Fig. 4 is a radial recess) of a wall (i.e. at 37) of the other link (as seen in Fig. 4).
With regard to claim 24, Peterson discloses in that the seal support comprises a radial recess (i.e. the groove shown receiving the seal 27), in particular groove (as seen in Fig. 4), in which the seal is supported (as seen in Fig. 4), in particular axially secured (as it is restrained on both axial sides thereof by groove walls).
With regard to claim 25, Peterson discloses that the one link is a single- or multi-part metal and/or cast component (i.e. as seen in the cross-hatching in Fig. 4 it is metal and must either be one or more pieces), and/or the seal support is a single- or multi-part metal component (i.e. as seen in the cross-hatching in Fig. 4 it is metal and must either be one or more pieces), and/or the seal is a single- or multi- part plastics component (i.e. the seal is disclosed as a plastic in col. 2 lines 54-61), and/or the seal support and the seal are made of different materials (as seen in the cross-hatching in Fig. 4).
With regard to claim 25, Peterson discloses that the sealing between the two links by the seal meets at least protection class IP5 and/or IP54 (i.e. as a physical seal if formed there in as seen in Fig. 4 it provides some amount of an ingress protection seal against water and/or dust as this limitation is interpreted in light of the above 112(b) rejection).
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 (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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 26 and 27, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Peterson et al. (US 4,678,952) alone.
With regard to claim 26, Peterson is silent as to the exact materials of the seal support and the one link and thus fails to explicitly disclose that the seal support and the one link are made of different materials. However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Peter son such that the of the seal support and the one link are made of different materials as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification would have provided the expected benefits of tailoring each material to the expected conditions and strengths needed by the different parts (e.g. a lighter weight material for the larger part to save weight, a stronger material for the part needing more strength, etc.).
With regard to claim 27, Peterson discloses that the seal support and the one link are both metal (see the cross-hatching in Fig, 4), but is silent as to the exact materials of the seal support and the one link and thus fails to explicitly disclose that the seal support and the one link are made of the same material. However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Peter son such that the of the seal support and the one link are made of different materials as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification would have provided the expected benefits of simplifying manufacturing by needing to have fewer types of materials available.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides additional examples of similar sealed robotic arm links and seals for relatively rotating components having features similar to those claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675