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
Applicant’s election without traverse of Species A1 and Species B2 in the reply filed on 5/18/2026 is acknowledged.
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 following must be shown or the feature(s) canceled from the claim(s):
the “carrier section [resting] against an inner surface of the outer tube and/or of an inner surface of the fastening adapter” (see claim 1),
“wherein the first annular gap is bounded by an axial end face of the connecting piece and by a first axial end face of the fastening adapter and/or wherein the second annular gap is bounded by a second axial end face of the fastening adapter and by an axial end face of the outer tube” (See claim 2)
“wherein adjacent outer surfaces of the outer tube, of the fastening adapter, of the first annular seal, of the second annular seal and of the end sleeve each have an identical profiling in a projection plane aligned transversely with respect to the axis of movement.” (claim 8)
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
Claims 1-10 are objected to because of the following informalities:
The claims are grammatically inconsistent which reduces readability of the claims. For example, claim 1, line 2 recites “the end assembly being arranged on” while claim 1, line 6 recites “and which is adjoined by a carrier section”. The word “being” is the present participle of the verb “to be” while the word “is” is the third-person singular present tense. The Examiner suggests in the former instance “wherein the end assembly is arranged on”. This issue of inconsistent grammar is found throughout the claims. The Applicant should proof-read the claims and correct as necessary.
Claims 1, 2, 4-8, and 10 have poor readability. Each of these claims is a wall of text (i.e. in a single paragraph) with multiple clauses. Where appropriate, these clauses and elements should be separated out into separate lines/paragraphs to improve readability, and provided with transitional words/phrases (e.g. “wherein”) where appropriate. See the example suggested langue in the 35 USC 112(b) section hereinbelow.
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 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the carrier section resting against an inner surface of the outer tube and an inner surface of the fastening adapter, does not reasonably provide enablement for the carrier section resting against an inner surface of the outer tube or an inner surface of the fastening adapter. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Claim 1 recites “and/or”. Claim language following the form of “A and/or B” is not inherently indefinite and not inherently unenabled merely for reciting the words “and/or”. However, such “and/or” claim language must:
be supported by a specification that complies with the requirements under 35 U.S.C. 112(a) for embodiments comprising A alone, B alone, and both A and B together.
Comply with 35 U.S.C. 112(b) in that A and B cannot be mutually exclusive features where A and B are not supported as existing together in a single embodiment. A alone, B alone, and both A and B together must be definite.
In other words, to comply with 35 U.S.C. 112(a) and 112(b) if the claim recites “A and/or B”, the following must be true:
The metes and bounds of both A and B, in combination, must be understood by a person of ordinary skill in the art when read in light of the specification (AND/OR).
The metes and bounds of A alone must be understood by a person of ordinary skill in the art when read in light of the specification (AND/OR).
The metes and bounds of B alone must be understood by a person of ordinary skill in the art when read in light of the specification (AND/OR).
In this instance, the “and/or” claim language fails to comply with 35 USC 112(a) because the specification only shows how the carrier section rests against both an inner surface of the outer tube and an inner surface of the fastening adapter (I.e. A and B is enabled but A alone is not enabled and B alone is not enabled).
In the embodiment shown by Figure 2, the carrier section 25 rests against both an inner surface of the outer tube 11 and an inner surface of the fastening adapter 91.
In the embodiment shown by Figure 3, the carrier section 75 rests against both an inner surface of the outer tube 11 and an inner surface of the fastening adapter 91.
No embodiment shows or describes how a carrier section rests against only the inner surface of the outer tube and not the inner surface of the fastening adapter.
No embodiment shows or describes how a carrier section rests against only the inner surface of the fastening adapter and not the inner surface of the outer tube.
Therefore, the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Likewise, claim 2 recites “wherein the first annular gap is bounded by an axial end face of the connecting piece and by a first axial end face of the fastening adapter and/or wherein the second annular gap is bounded by a second axial end face of the fastening adapter and by an axial end face of the outer tube”.
In this instance, the “and/or” claim language fails to comply with 35 USC 112(a) because the specification only shows how the second annular gap is bounded by a second axial end face of the fastening adapter and by an axial end face of the outer tube and not how the first annular gap is bounded by an axial end face of the connecting piece and by a first axial end face of the fastening adapter (I.e. B alone is enabled, but A alone is not enabled, and A and B together is not enabled).
In the embodiment shown by Figure 2, the second annular gap (64) is bounded by a second axial end face of the fastening adapter (91) and by an axial end face of the outer tube (11).
In the embodiment shown by Figure 3 the second annular gap (64) is bounded by a second axial end face of the fastening adapter (91) and by an axial end face of the outer tube (11).
No embodiment shows or describes how the first annular gap is bounded by an axial end face of the connecting piece and by a first axial end face of the fastening adapter.
No embodiment shows or describes how the first annular gap is bounded by an axial end face of the connecting piece and by a first axial end face of the fastening adapter alone without the second annular gap bounded by a second axial end face of the fastening adapter and by an axial end face of the outer tube.
Therefore, the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with claim 2.
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 1-10 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, line 1 recites “A linear bearing for a linear actuator, having an outer tube […]”. It is unclear whether the outer tube and what follows is claimed as part of the linear bearing or claimed as part of the linear actuator. Related to this issue is the fact that claim 1 is missing a transitional phrase between a preamble and a body of the claim, such as “comprising” (open-ended) or “consisting of” (closed). See MPEP § 2111.03.
Claim 1 lines 1-3 recite “A linear bearing for a linear actuator, having an outer tube extending along an axis of movement and having an end assembly, the end assembly being arranged on an end region of the outer tube and comprising an end sleeve, a connecting piece[…]”. It is unclear whether the linear bearing, the linear actuator, or the end assembly comprises an end sleeve, a connecting piece etc.
Claim 1, line 12 recites “and further having an actuator rod”. It is unclear what further has the actuator rod. Does the linear bearing, the linear actuator, the outer, the end assembly, or some other component “further [have] an actuator rod”? For the purpose of further examination on the merits it will be assumed that the linear actuator comprises the claimed actuator rod.
Claim 1 recites “and/or”. Claim language following the form of “A and/or B” is not inherently indefinite merely for reciting the words “and/or”. However, such “and/or” claim language must:
be supported by a specification that complies with the requirements under 35 U.S.C. 112(a) for embodiments comprising A alone, B alone, and both A and B together.
Comply with 35 U.S.C. 112(b) in that A and B cannot be mutually exclusive features where A and B are not supported as existing together in a single embodiment. A alone, B alone, and both A and B together must be definite.
In other words, to comply with 35 U.S.C. 112(a) and 112(b) if the claim recites “A and/or B”, the following must be true:
The metes and bounds of both A and B, in combination, must be understood by a person of ordinary skill in the art when read in light of the specification (AND/OR).
The metes and bounds of A alone must be understood by a person of ordinary skill in the art when read in light of the specification (AND/OR).
The metes and bounds of B alone must be understood by a person of ordinary skill in the art when read in light of the specification (AND/OR).
In this instance, the “and/or” claim language fails to comply with 35 USC 112(b) because the specification only shows how the carrier section rests against both an inner surface of the outer tube and an inner surface of the fastening adapter (I.e. A and B is enabled but A alone is not enabled and B alone is not enabled). See the 35 USC 112(a) analysis hereinabove for more detail as to why the specification does not enable the “and/or” language. According to MPEP § 2173.03, “a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. Since the specification disclosure does not enable A alone and B alone, this conflict between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain.
Likewise, claim 2 recites “and/or” language in “wherein the first annular gap is bounded by an axial end face of the connecting piece and by a first axial end face of the fastening adapter and/or wherein the second annular gap is bounded by a second axial end face of the fastening adapter and by an axial end face of the outer tube”.
In this instance, the “and/or” claim language fails to comply with 35 USC 112(b) because the specification only shows how the second annular gap is bounded by a second axial end face of the fastening adapter and by an axial end face of the outer tube and not how the first annular gap is bounded by an axial end face of the connecting piece and by a first axial end face of the fastening adapter (I.e. B alone is enabled, but A alone is not enabled, and A and B together is not enabled). See the 35 USC 112(a) analysis hereinabove for more detail as to why the specification does not enable this “and/or” language. Since the specification disclosure does not enable A alone and does not enable A and B together, this conflict between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain.
The claims are written in generally narrative form making it unclear which elements are being positively recited and which should be given patentable weight. The examiner suggests rewriting the claim in accordance with 37 CFR 1.75(i) so as to make clear what elements are being positively recited and what should be given patentable weight. As written the claims are unclear and indefinite. Appropriate correction is required. The Examiner suggests separating each claim from being a wall of text in the form of a single paragraph into multiple indented paragraphs. For example:
“1. A linear bearing for a linear actuator, the linear actuator comprising:
an outer tube extending along an axis of movement, and
an end assembly,
wherein the end assembly is arranged on an end region of the outer tube,
wherein the end assembly comprises:
an end sleeve,
a connecting piece,
a fastening adapter,”
Et cetera.
Claim 8 recites “wherein adjacent outer surfaces of the outer tube, of the fastening adapter, of the first annular seal, of the second annular seal and of the end sleeve each have an identical profiling in a projection plane aligned transversely with respect to the axis of movement.” The specification does not explain what this limitation means. The specification does not point out in the drawings what this limitation means. Adjacent outer surfaces of the outer tube, of the fastening adapter, of the first annular seal, of the second annular seal and of the end sleeve appear to have different radii from at least some of each other, and therefore do not appear to have an identical profiling in a projection plane aligned transversely with respect to the axis of movement. This conflict between the claimed subject matter and the specification renders the scope of the claim indefinite.
Claim 9 recites the limitation “the mutually opposite end regions” in line 2. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Allowable Subject Matter
Claims 1-10 may be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a), 35 USC 112(b), and overcome the objections, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter of the claims as best understood:
The closest prior art is White (US2024/0413701). White discloses, inter alia, a linear actuator comprising a linear bearing. White further discloses, inter alia, the linear actuator comprises an outer tube (92), an end assembly (See Fig. 3), a fastening adapter (30), and an end sleeve (80). White further discloses a first annular seal received in a first annular gap and a second annular seal received in a second annular gap (see seals 50 and 70, the claimed annular gaps are the locations in which the seals are received). While White further discloses the first annular gap is between the end sleeve (80) and the fastening adapter (30), White does not disclose the additional limitation that the second annular gap is between the fastening adapter (30) and the outer tube (92) (See Fig. 3) in combination with all other claim limitations. There is no teaching, suggestion, or motivation in the prior art to modify the prior art device of White to have all of the missing claim limitations, in combination with all other claim limitations, as the claims are best understood, without the use of impermissible hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY T PRATHER whose telephone number is (571)270-5412. The examiner can normally be reached Monday-Thursday 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 571-270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/ Supervisory Patent Examiner, Art Unit 3618
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