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 .
Claim Objections
Claim 1 is objected to because of the following informalities: On line 12 of the claim, “DLC (diamond-like carbon) film” should be changed to “diamond-like carbon (DLC) film”. Appropriate correction is required.
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 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.
Lines 14-16 of claim 1 state, “an elastic member interposed liquid-tight between the inner peripheral surface of the attachment and the DLC film.” This limitation is viewed to be vague and indefinite, because it is unclear as to how or in what way that the elastic member is interposed between the inner peripheral surface of the attachment and the DLC film when the elastic member is actually seated within a groove formed in the third hole/inner peripheral surface of the attachment. In other words, since the groove interrupts the inner peripheral surface of the attachment, how is it that the elastic member is interposed between the inner peripheral surface of the attachment and the DLC film? Examiner suggests the following amendment so as to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph: “an elastic member interposed liquid-tight between a groove formed in the inner peripheral surface of the attachment and the DLC film”.
Claim 2 recites the limitation "the end face side" in line 4. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests the following amendment so as to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph: “[[the]] an end face side”.
Claim 2 recites the limitation "the other end" in line 4. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests the following amendment so as to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph: “another end”.
Lines 1-5 of claim 4 state, “A motor comprising: a rotary shaft rotatable in the circumferential direction and having a tubular shape and a through hole which liquid flows in an axial direction, wherein the rotary shaft is connected with the rotary-side joint of the rotary joint device according to claim 1.” This limitation is viewed to be vague and indefinite, because as claimed, it is unclear if clam 4 requires the particulars of claim 1. This stems from the fact that the disclosed motor and the disclosed rotary joint device are separate elements, and because claim 4 is directed to “A motor”. Examiner suggests the following amendment so as to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph: “A motor assembly comprising: a motor including a rotary shaft rotatable in the circumferential direction and having a tubular shape and a through hole which liquid flows in an axial direction; and the rotary joint device of claim 1, wherein the rotary shaft is connected with the rotary-side joint of the rotary joint device according to claim 1…”
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 1-5 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.
Lines 14-16 of claim 1 state, “an elastic member interposed liquid-tight between the inner peripheral surface of the attachment and the DLC film.”
With respect to the drawings filed on 3/6/2025, Examiner directs attention to Figure 3. As can be seen in Figure 3, the attachment (31) comprises a third hole (310) that the inner peripheral surface defines. Next, per paragraph [0062] of the specification filed on 3/6/2025, the third hole (310) of the attachment (31) has a groove (34) on the inner peripheral surface, where the groove (34) runs continuously in the circumferential direction of the attachment (31), and where an elastic member (31) is housed in the groove (34). Noting this, it can be seen in Figure 3 of the drawings filed on 3/6/2025 that the groove (34) interrupts the inner peripheral surface of the attachment (31). Since the groove (34) interrupts the inner peripheral surface, and because the elastic member (31) is housed in the groove (34), the elastic member (31) is not actually interposed between the inner peripheral surface of the attachment (31) and the DLC film (35). Since the elastic member (31) is not actually interposed between the inner peripheral surface of the attachment (31) and the DLC film (35), the drawings filed on 3/6/2025 do not disclose, “an elastic member interposed liquid-tight between the inner peripheral surface of the attachment and the DLC film.”
With regards to the specification filed on 3/6/2025, at least paragraphs [0011] and [0063] thereof disclose the elastic member (31) being interposed liquid-tight between the inner peripheral surface of the attachment (31) and the DLC film (35). The specification though, is not in agreement with the drawings filed on 3/6/2025. Thus, while paragraphs [0011] and [0063] disclose the elastic member (31) being interposed liquid-tight between the inner peripheral surface of the attachment (31) and the DLC film (35), this contradicts what is shown in Figure 3 with the elastic member (31) actually being interposed liquid-tight between the groove (34) formed in the inner peripheral surface of the attachment (31) and the DLC film (35).
Due to the lack of agreement between the specification and the drawings, it cannot be reasonably conveyed to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Examiner’s Comment
A thorough search has been conducted re: the invention/claims. That being said, though no art rejections are considered to presently apply to claims 1-5. Examiner notes that no indication regarding the allowability of the subject matter of claims 1-5 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, particularly given that it is unclear what changes to the claims might be necessary to overcome the above-described issue(s) with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 Form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Vitale whose telephone number is (571)270-5098. The examiner can normally be reached Monday - Friday 8:30 AM- 6:00 PM.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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