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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6/12/2025, 7/24/2025, 7/25/2025 and 12/09/2025 have been considered by the examiner.
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 “azimuthal range”, “azimuthal spacing” and “orbital incline angle” 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification should provide antecedent basis for the claimed “azimuthal range”, “azimuthal spacing” and “orbital incline angle”. No new matter should be entered.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “configured to configured to rotate roller worm” which appears to be a typographical error. Deleting the repeated phrase “configured to” and adding an appropriate article before “roller worm” would be an appropriate correction.
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 1-13 and 15-17 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 “a majority of an azimuthal range” which is unclear and renders the claims indefinite. Specifically, it is unclear what an “azimuthal range” is, what the majority of such a range would be, and how the claimed tracks are required to be shaped according to such a portion of a range.
Claim 3 recites “a majority of an azimuthal range” which is unclear for the reasons given above. Additionally, the double inclusion of the term makes it unclear if there are more than one “azimuthal range” and if the majority of claim 3 is the same, or different from the majority of claim 1.
Claim 9 recites “azimuthal spacing” which is unclear and renders the claims indefinite. The term “azimuthal spacing” is not defined by the claims nor described in the disclosure, and the spacing required by the claims cannot be determined.
Claim 13 recites “a minority of the azimuthal range” and is unclear for the same reasons given for claim 1 above.
Claim 15 recites “an orbital incline angle” which is unclear and renders the claims indefinite. The term “orbital incline angle” is not defined by the claims nor described in the disclosure, and how this angle differs from the previously inclined orientation is unknown. As such, the angle of the rollers relative to the body or other reference geometry required by the claim cannot be determined.
Claim 17 recites “azimuthal spacing” and is unclear for the same reasons given for claim 9 above.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-10 and 13, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 2059540 (hereinafter D1).
D1 discloses a system comprising: a rack (20) comprising a plurality of tracks (22), each sweeping a majority of an azimuthal range (as best understood, the tracks of D1 sweep a majority of what can be considered an azimuthal range) about a central axis (canter axis of 2); and a roller worm (see Figs. 2-3) comprising: a body (1) defining a primary axis (center axis of 2) which is coaxial with the central axis; and a plurality of discrete roller assemblies (5) arranged helically about the primary axis of the body, at least one roller assembly contacting a track (see Fig. 6) of the plurality; wherein the roller worm is at least partially unenclosed (see Fig. 5); wherein the roller worm is radially circumscribed by the rack along a majority of an azimuthal range (as best understood, the azimuthal range can be considered to a portion of the circumference of the body that is less than twice as large as the portion circumscribed by the rack) of the roller worm about the primary axis and the roller worm is unenclosed by the rack along a remainder of the azimuthal range of the roller worm; wherein each track of the plurality defines a sweep angle (see Figs. 4 and 5) of less than 360 degrees about the central axis; further comprising: a drive mechanism (39/40/41/42) configured to configured to rotate roller worm about the central axis to drive linear translation of the roller worm along the central axis; wherein the drive mechanism is configured to apply force to the roller worm orthogonal (the force from the chain 40 would be tangential to sprocket 39, and therefore be orthogonal) to the primary axis; wherein the at least one roller assembly defines a nonzero incline angle (rollers are 90 degrees to the primary axis) relative to the primary axis; wherein the tracks are uniformly spaced (see Fig. 2) along the central axis; wherein the plurality of discrete roller assemblies defines a helical pattern (see Fig. 2) with equal azimuthal spacing between adjacent roller assemblies; wherein the discrete roller assemblies are arranged with equal azimuthal spacing (as best understood, see Fig. 2) between adjacent roller assemblies of the plurality of discrete roller assemblies; wherein the rack further comprises a second plurality of tracks (24), each sweeping a minority of the azimuthal range (as best understood, elements 24 sweep a minority of what can be considered an azimuthal range) about the central axis.
Claim(s) 14-17, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by St-Germain et al. (USPN 6,598,708).
St-Germain discloses a system comprising: a roller worm body (36) defining a primary axis (A) and a reference plane orthogonal to the primary axis; and a plurality of roller assemblies (46) arranged helically about the primary axis of the roller worm body, each roller assembly independently coupled to the roller worm body and inclined (see Fig. 3) relative to the reference plane; wherein each roller assembly defines a respective rotational axis which is angled relative to the primary axis and has an orbital incline angle (as best understood, see Fig. 3), relative to the reference plane, which is nonzero; wherein the orbital incline angles (as best understood, see Fig. 3) of each roller assembly are equal; wherein the plurality of roller assemblies defines a helical pattern with equal azimuthal spacing (as best understood, see Fig. 3) between adjacent roller assemblies of the helical pattern.
Claim Rejections - 35 USC § 103
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.
Claim(s) 11, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 in view of Metz (USPN 3,766,788).
D1 discloses the claimed invention except for wherein the plurality of roller assemblies has varying pitch relative to the primary axis.
Metz discloses rollers (38) that are adjustable (Column 4, lines 9-25) to vary the pitch to match a varied pitch of a track (Column 4, lines 9-25).
It would have been obvious to one having ordinary skill in the art at the time the application was filed to have varied the pitch of the rollers of D1, in order to account for manufacturing tolerances of the rack.
Claim(s) 12, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 and Metz as applied to claim 11 above, and further in view of Tseng et al. (USPN 5,960,668).
D1 and Metz disclose the claimed invention, except for wherein the at least one roller assembly comprises a convex engagement surface which contacts the track.
Tseng discloses at least one roller assembly (30) having a convex engagement surface (see Fig. 3(a)).
It would have been obvious to one having ordinary skill in the art at the time the application was filed to have modified the device of the combination of D1 and Metz, to have rollers with convex engagement surfaces, in order to better control the line of contact, as taught by Tseng (Column 4, lines 38-40).
Claim(s) 18, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over St-Germain in view of Metz (USPN 3,766,788).
St-Germain discloses the claimed invention except for wherein the plurality of roller assemblies has varying pitch relative to the primary axis.
Metz discloses rollers (38) that are adjustable (Column 4, lines 9-25) to vary the pitch to match a varied pitch of a track (Column 4, lines 9-25).
It would have been obvious to one having ordinary skill in the art at the time the application was filed to have varied the pitch of the rollers of St-Germain, in order to account for manufacturing tolerances of the rack.
Claim(s) 19-20, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over St-Germain and Metz as applied to claim 18 above, in further view of Tseng et al. (USPN 5,960,668).
St-Germain and Metz disclose the claimed invention, except for wherein each roller assembly comprises an ellipsoidal roller element or a convex engagement surface.
Tseng discloses at least one roller assembly (30) having a ellipsoidal/convex engagement surface (see Fig. 3(a) sides of roller 33 are convex and can be considered ellipsoidal as the convex sides can be formed by sections of an ellipse).
It would have been obvious to one having ordinary skill in the art at the time the application was filed to have modified the device of the combination of St-Germain and Metz, to have rollers with ellipsoidal/convex engagement surfaces, in order to better control the line of contact, as taught by Tseng (Column 4, lines 38-40).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-42 of U.S. Patent No. 12,345,312. Although the claims at issue are not identical, they are not patentably distinct from each other because, as best understood, the claims of the ‘312 patent anticipate the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE COOK whose telephone number is (571)272-5968. The examiner can normally be reached M-F 8:00-4:00 PM.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JAKE COOK
Primary Examiner
Art Unit 3618
/Jake Cook/Primary Examiner, Art Unit 3618