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
This office action is in response to applicant’s reply filed 1/13/26, which contains the following (begin excerpt/):
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Applicant’s election without traverse of Species I (Figs. 1-3) in the reply filed on 1/13/26 is acknowledged.
Claims 6, 8-9, and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/13/26.
Drawings
The drawings are objected to because Fig. 1 lacks hatching (MPEP 608.02 IX) (Examiner notes other figures with sectional views also lack hatching but are of non-elected species so these are not being objected to here). 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:
i. In [0027] for example there is “annular groove 13” and “nib 14”. Then in [0031] there is “nib 13” and “groove 14”. [0027] and the like are believed to be the correct numbers while [0031] is believed to be the incorrect part numbers (MPEP 608.02(e)).
Appropriate correction is required.
Claim Objections
Claims 1-5, 7, 10-12, and 14 are objected to because of the following informalities:
i. Claim 1 recites “the balls shaped end” when examiner believes this should read “the
--ball-- shaped end”.
ii. Claim 1 recites “wherein the ball support arrangement is arranged between the piston shoe and the balls shaped end” when examiner believes this should read something like “wherein the ball support arrangement is --configured to be-- arranged between the piston shoe and the --ball-- shaped end” as the extent of the claim 1 language does not appear to extend beyond the ball support arrangement (but see also 112(b) below).
iii. Claim 2 recites “wherein the ball support arrangement is formed of at least one material of a group of materials comprising plastics, ceramics, metal and fibers, wherein the plastics is preferably PEEK and the fibers are preferably carbon fiber and/or fiberglass”. After election, some of the claimed materials do not appear to be supported by the elected species. [0033], describing the elected species, states “Further, the ball holding portion 5 is formed of plastics, in particular or PEEK.”
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 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:
i. “A ball support arrangement for a piston shoe arrangement... wherein the ball support arrangement is separate and replaceable, wherein at least a ball holding portion of the ball support arrangement is configured to accommodate at least part of the ball shaped end” in Claim 1 (where “ball support arrangement” is interpreted as at [0028]: “In the first embodiment, the ball support arrangement is formed of the ball holding portion 5 and the retainer portion 7” and “ball holding portion” is interpreted as ball holding portion 5 of the elected species in Figs. 1-3, described at [0027-0033]).
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.
Examiner notes:
Applicant has provided special definitions (MPEP 2173.01, 2173.05(a) III, and 2111.01 IV) of
“separate” ([0010]): “The term "separate" means in the present application that the ball support arrangement is toolless mountable and dismountable to the piston shoe arrangement. There is no fastening means, adhesive or any other bonding means involved. By separating the ball support arrangement from the piston shoe, the ball support arrangement can be replaced by itself, without replacing the piston shoe as well. Thus, the piston does not need to be replaced, which results in a low maintenance effort.”
“symmetrical” ([0019]): “In the present case, the term "symmetrical" means that at least one of the following symmetries is present: Rotational symmetry about the axis and/or mirror geometry wherein a mirror plane comprises the axis.”
Claim Rejections - 35 USC § 112
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 1-5, 7, 10-12, and 14 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 is indefinite. Claim 1 lacks a clear preamble (MPEP 2111.02, 2111.03). As best understood, the claim is directed to a “ball support arrangement” where the “piston shoe arrangement”, “axial piston machine”, and related language define the location for the ball support arrangement.
Claim 2 recites “wherein the ball support arrangement is formed of at least one material of a group of materials comprising plastics, ceramics, metal and fibers, wherein the plastics is preferably PEEK and the fibers are preferably carbon fiber and/or fiberglass.” This is indefinite. MPEP 2173.05(d) states “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.” The presence of “preferably...” renders the metes and bounds of the claim indefinite.
Claim limitation “a mounting arrangement configured to releasable mount the ball support arrangement to the ball shaped end and/or to the piston shoe” (Claim 3) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. [0012] discusses a mounting arrangement but is not directed to any particular embodiment and contains no part numbers. Both [0052] and [0053] mention a mounting arrangement but these not clearly linked to the elected species. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 5 recites “wherein the ball support arrangement, preferably at least the ball holding portion, is configured to be attached via a snap-on connection to the ball shaped end”. This is indefinite. MPEP 2173.05(d) states “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.” The presence of “preferably...” renders the metes and bounds of the claim indefinite.
Claim 7 recites the limitation "the retainer cup" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. A retainer cup is introduced in Claim 4 but Claim 7 does not depend from Claim 4.
Claim 11 recites the limitation "the axis" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the retainer portion" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites “wherein the ball support arrangement is formed according to claim 1”. This is indefinite. Claim 12 depends from Claim 1. Claim 1 is not directed to a method of forming but is instead directed to an apparatus claim. Claim 12 itself is directed to an apparatus but a potential method step of “is formed” raises a question as to the metes and bounds of the claimed invention (MPEP 2173.05(p) II).
Claim 14 recites “An axial piston machine comprising a piston shoe arrangement according to claim 11”. This is indefinite. Claim 11 is directed to a ball support arrangement, not a piston shoe arrangement; instead Claim 12 is directed to a piston shoe arrangement. It may be that Claim 14 should depend from Claim 12 instead of Claim 11.
Those claims not specifically mentioned above are rejected as being rendered indefinite by virtue of their dependence on an indefinite claim.
Allowable Subject Matter
Claims 1-5, 7, 10-12, and 14 would appear to be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Regarding Claim 1, the instant invention comprises, in conjunction with the other claimed features, a ball support arrangement for a piston shoe arrangement,...wherein the ball support arrangement is separate and replaceable, wherein at least a ball holding portion of the ball support arrangement is configured to accommodate at least part of the ball shaped end. Examiner notes that applicant has provided a special definition regarding the claim term “separate” and the structures being claimed include 112(f) invocations, as noted earlier in this action.
Regarding the prior art, Jepsen (US 5762477) teaches a ball arrangement (with 11, Figs. 1-3) for a piston shoe arrangement, wherein the piston shoe arrangement is configured to be provided in an axial piston machine (1, Fig. 1), wherein the piston shoe arrangement comprises a piston body (4) having a ball shaped end (with 5) and a piston shoe (6), wherein the ball shaped end is provided in the piston shoe (Fig. 1), wherein the ball arrangement is arranged between the piston shoe and the balls shaped end (Fig. 1), wherein at least a ball holding part (part of 11 for 5, Fig. 1) of the ball arrangement is configured to accommodate at least part of the ball shaped end (Fig. 1). However Jepsen lacks “a ball support arrangement...” and “wherein the ball support arrangement is separate and replaceable, wherein at least a ball holding portion of the ball support arrangement is configured to accommodate at least part of the ball shaped end”: note the structure of the claimed “ball support arrangement” and “ball holding portion” as disclosed in the elected species included as part of the 112(f) interpretation differs from the structure disclosed by Jepsen. Jepsen also teaches using injection moulding to form the plastic part (ex. Col. 5, lines 15-28) instead of the claimed “separate and replaceable” language. Jepsen’s structure is different than applicant’s and is assembled together in a different fashion. It would not have been obvious to modify Jepsen with the other cited prior art of record to arrive at the applicant’s instant invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Those items on the 892 each teach elements of the instant invention related to ball support arrangements for a piston shoe arrangement in an axial piston machine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL QUANDT whose telephone number is (571)272-1247. The examiner can normally be reached Monday-Thursday 10am-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, NATHANIEL WIEHE can be reached at (571)272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL QUANDT
Examiner
Art Unit 3745
/MICHAEL QUANDT/Examiner, Art Unit 3745