UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/397,914
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`01/04/2017
`
`TSUTOMU SAKATA
`
`PANDP01 SSUS
`
`7306
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 441 15
`
`MACARTHUK VICTOR L
`
`ART UNIT
`3658
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/04/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
`
`Application No.
`15/397,914
`Examiner
`VICTOR L MACARTH u R
`
`Applicant(s)
`SAKATA et al.
`Art Unit
`3658
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 11/10/2019.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) wis/are pending in the application.
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`5a) Of the above Claim(s) 15—19 is/are withdrawn from consideration.
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`
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`E] Claim(ss)_is/are allowed.
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`Claim(ss)—1_1—4 is/are rejected.
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`1:] Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`is/are: a)[:| accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`SD Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20191130
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`

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`Application/Control Number: 15/397,914
`Art Unit: 3658
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`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Election/Restrictions
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`Applicant's election with traverse of the Group I product invention and the species of
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`figures 4 and 8A in the reply filed on 11/10/2019 is acknowledged.
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`Applicant
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`traverses the product/method restriction stating that
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`they have the same
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`design/operation since the product cannot be used in an uncontrolled manner and thus lacks
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`burden. This is not persuasive. As explained in the 35 USC 112 rejection elsewhere below a
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`product claim is rendered unclear by recitation of any method of using steps therein. Further, if
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`the limitation is amended to be a mere functional intended use such would only limit the product
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`claim to structure capable of performing the function. Accordingly, product claim 1 is not limited
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`to the claim 15 method of use steps nor the order of the steps "first" and "then". For instance, the
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`claim 1 product is not limited to the claim 15 method step of "controlling the linear actuator to
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`move the center of gravity of the second arm to the axis or rotation m, and m controlling the
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`rotating mechanism to rotate the support". Rather the claim 1 structure could be used in a method
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`reversing the claim 15 order of steps or a method that is completely uncontrolled (e.g., to be used
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`in a method of storage, method of disassembly, etc.) Regarding burden, the examiner notes that
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`search, examination and preparation of this action for only the elected product has exceeded the
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`time allotted for a single application such that further search/examination of the non—elected
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`method would have been impossible (and thus unduly burdensome). Applicant has failed to set
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`

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`Application/Control Number: 15/397,914
`Art Unit: 3658
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`Page 3
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`forth any specific search much less a search that would have encompassed both inventions without
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`undue burden.
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`Applicant's traverses the species requirement stating the some figures depict different
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`views of a common one of the disclosed plural embodiments and that the disclosed embodiments
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`are "interchangeable in satisfying the claims", which the examiner takes as an admission that the
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`disclosed embodiments are obvious variants of each other. Accordingly the species requirement
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`is withdrawn.
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`The product/method restriction requirement is still deemed proper and is therefore made
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`FINAL.
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`Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR l.l42(b), as
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`being drawn to a nonelected invention, there being no allowable generic or linking claim.
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`Claim Rejections - 35 US C § 112
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.7The 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.
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`Claims 1-14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to
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`particularly point out and distinctly claim the subject matter which the inventor or a joint
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`inventor regards as the invention.
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`Claims 1 and 6 are unclear since the limitation "the linear actuator moves the center of
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`gravity of the second arm to the axis of rotation first, and then the rotating mechanism rotates the
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`support" (last three lines of claim 1 and similarly phrased claim 6, emphasis added) constitutes an
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`unclear method step of using the apparatus.1
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`1 See MPEP 2173.05(p)(ll) which states "A single claim which claims both an apparatus and the method steps of using the
`app-mains is its-definite under 35 U.S.C. 112(b). See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
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`

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`Application/Control Number: 15/397,914
`Art Unit: 3658
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`Page 4
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`The claim 2 and claim 7 repetition of the claim 1 and claim 6 limitation "in rotating the
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`support, the linear actuator moves the center of gravity of the second. arm to the axis of rotation
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`first, and, then the rotating mechanism, rotates the support” is unclear for the reasons explained
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`above for claims 1 and ti, and additionally for unclear thiplicationfl The remaining claim 2 and 7
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`method of use steps are unclear for the reasons explained for claims 1 and t3 (i.e., product and
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`process of use).
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`The claim 3 and, claim 8 IXYll'iiijt'fli ”the cmitml chrcuit cmitrois the linear actuator to move
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`the center of gravity of the second arm to the axis of rotation first, and then controls the rotating
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`mechanism to rotate the support” is an unclear method of using step in a product claim.
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`Claims 4, 8 anti 9 similarly have nuclear method of using steps and unclear repetition.
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`The remaining claims depend, from the abo v e and are tl'itis likewise nuclear/raj acted.
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`Claim Rejections - 35 US C § 103
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`The following is a quotation of 35 USC. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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 of this title, 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.
`
`1318, 97 USPQ2d 1737, 1748—49 (Fed. Cir. 201 1).... IPXL Holdings v. Amazon.cam, Inc, 430 F.3d 1377, 1384, 77 USPQ2d
`1140, 1145 (Fed. Cir. 2005) . .. it was unclear whether infringement ... occurs when one creates a system that allows the user
`[to use the input means], or whether infringement occurs when the user actually uses the input means); Ex parte Lyell, 17
`USPQ2d 1548 (Ed. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of
`using it held ambiguous and properly rejected under 35 USC. 112, second paragraph )f'
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`2 See MPEP 2l73.05(o) which states that where a claim directed to a device can be read to include the same limitation
`twice, the claim may be indefinite. Ix parte Kristensen, 10 USPQ2d 1701 (Ed. Pat. App. & Inter. 1989).
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`

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`Application/Control Number: 15/397,914
`Art Unit: 3658
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`Page 5
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`Claims 1-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Garnier FR2935630 (see also English translation filed 2/1/2018) in View of Hirai USS712552
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`and/0r Sakamoto US6781337.
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`Claim 1. {:Qarnier discieses an electrodynaniic apparatus comprising: a first arm (41)
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`extending in a first direction (axial direction of 4 and 5'); a second arm (5) supported by the first
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`arm; a linear actuator ( actuator causing the disclosed motorized linear telescoping actuation of 5
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`relative. to 4) that is prrwided in the first an'n or the sectnid arm and moves the. second arrn along
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`the first direction with respect to the first arm; a support (2) extending in a second direction (axial
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`direction of 2} that is different from the first direction and supporting the first arm; and a rotating
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`mechanism ( i) that rotates the support about an axis of rotation parallel to the seeond direction,
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`Garnler does not shami how the arms are powered/wired,
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`lElairai teaehes that m’not arms should
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`he powered through a wireiess connection therehetween such that a first, arrn includes a power
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`transmission antenna ('2), the second arm includes a power reception antenna (8}, the power
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`transmission antenna supplies eleetrie power to the power reeeption antenna wirelessly and the
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`power reception anternia siippiing the electric power to a load (inottn‘s. end el’l’xrtor, tooi, etey)
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`electricaliy connected to the power reception antenna. Hairai presides express motivation for
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`arms to he powered by Wireless connection of power ”reliably be transmitted... Without causing a
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`twist in the wires: __achieving an increased range of operation and keeping reliability over a long
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`period ol’tinie : $111115 can physically he detached and replaced. .. depending on the need of jobs to
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`he done”{col.3). Sahamoto also teaches wireless connection via antennas (312 and 3E5) for
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`siniiiar benefit/nioti‘v'ation. Therefore, it would have been obvious to one of ordinary skill in the
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`art before the effective filing date of the claimed invention to modify as detailed above.
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`In the
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`

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`Application/Control Number: 15/397,914
`Art Unit: 3658
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`Page 6
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`interest of compact prosecuti0n3, the examiner netes that it‘ the claim were aniended tn recite the
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`unclear methuti of use steps as a mere tunctienal intended use, the Gainierfliairai eunrhinatien,
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`having all claimed structure, wnulrl he presumed tn be inherently caturlile“ ul performing a function
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`of moving the center of gravity of the seennd arm tuwarrl the axis of retation (i.e., by telesceping
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`5 inward relative tn 4), and then having the rntating mechanism rutate the support. The examiner
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`untcs that a positive recitatiun 0f functiunal eapahility tu pcrferni a particular nrtler of operation is
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`net pmhihitive {if capahility tn perform in. the t'lpprisite order and visa versa.
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`Claim 2. The unclear claim 2 method til" using steps, if rewarded tn he a mere l‘une‘tienal
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`intended use” wunld he presumed inherently capable tn the print art structure in a manner similar
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`tu that described previnnsly fur elaini l.
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`Claims 3 and, 4, The examiner takes Ol'ticial Notice that it was extremely well lmnwn l’er
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`rebut arms to use a control circuit to central linear actuators anti rotating mechanisms therein. One
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`Of Ordinary sirill easily reengnizing the ehvieusnessi’desirahility of
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`such over manual
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`manipulaticnfcentrel. The remaining unclear claim 3 methed of using steps, if rcwurtietl tn he a
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`mere l’unctirinal intended use, would he presinnerl inherently capable tn tl'ie prinr art structure in a
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`manner similar tn that described previously for claim, 1.
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`3 As noted in the 35 USC 112 clarity rejections elsewhere above, a great deal of confusion and uncertainty exists as to the
`proper interpretation of the method of use steps. In the interest of compact prosecution, the examiner has applied the prior
`art under 35 USC. 103 in as best as the claims can be understood. However, in accordance with MPEP § 2173, a word
`for word mapping of the art to each and every claim limitation as currently written would be improper since such would
`require undue speculation as to the intended meaning/scope thereof. See In re Wilson. 4134 F.2341 133:1, l333 ((13th H70);
`In re Steele, 305 F.2d 859, 134 USPQ 292, (CCPA 19652,).
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`4 In accordance with MPEP §2112.01(I) and MPEP §2114, where the prior art structure is substantially identical to the claimed
`structure, the PTO must presume claimed functions/properties to be inherently capable thereto, thus presenting a primafacie case
`and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
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`

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`Application/Control Number: 15/397,914
`Art Unit: 3658
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`Page 7
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`Claim 5. Gamicr implies a motor for the rotating mechanism and Hairi teaches motors as
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`known for robot 311113. One of ordinary skill would easily recognize the dcsirabilityiobviousness
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`of a motor over manual operation.
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`(ill-(1i ms 6—12 and E4, The prior art is not overly complex and lies in the same general field
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`as applicant's claimed invention. Accordingly, the pertinence of the art to the remaining claims is
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`apparent and flows naturally from the detailed explanations of claims 1—5 above.5 6
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`Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Garnier
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`FR2935630 in View of Hirai USS712552, Sakamoto US6781337, Kurs U82010010944S,
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`Kesler U820100141042, Nyberg U820160072308 and/0r Ueda U820180299838.
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`Sakamoto, Kurs, Kesler, Nyberg and/or Ueda each teach that it was extremely well
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`known in the robot arm art to include an inverter circuit and rectifier circuit for numerous
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`benefits (e. g., efficiency, etc.) Therefore, it would have been obvious to one of ordinary skill in
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`the art before the effective filing date of the claimed invention to further modify
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`Garnier/Hirai/Sakamoto in view of Kurs/Kesler/Nyberg/Ueda as such.
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`5 See 37 CPR. 1.104(c)(2) which states "In rejecting claims for want of novelty or for obviousness, the examiner must
`cite the best references at his or her command. When a reference is complex or shows or describes inventions other than
`that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of
`each reference, if not apparent, must be clearly explained and each rejected claim specified.
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`6 See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to
`make an on—the—record claim construction of every term in every rejected claim and to explain every possible difference
`between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create
`such a burdensome and unnecessary requirement... Section 132 merely ensures that an applicant at least be informed of
`the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or
`should produce evidence." Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of
`the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or
`references relied upon. .
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`

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`Application/Control Number: 15/397,914
`Art Unit: 3658
`
`Page 8
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`Conclusion
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`Not relied upon above, but pertinent to applicant's disclosure, note the following prior art
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`documents disclosing wireless power transmission and expressly recite use in robots:
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`US 20110084658
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`US 20110114401
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`US 20110114400
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`US 20110241437
`
`
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`US 20110248573
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`US 20120001497
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`US 20120001496
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to VICTOR L MACARTHUR whose telephone number is
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`(571)272—7085. The examiner can normally be reached on M—Th 9:30am—8pm.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/VICTOR L MACARTHUR/
`
`Primary Examiner, Art Unit 3658
`
`