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 .
Information Disclosure Statement
The information disclosure statement filed on 02/13/2026 fails to comply with 37 C.F.R. § 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Here, the original document from the Chinese Patent Office has not been filed (only a translation was filed). It has been placed in the application file, but the information referred to therein has not been considered.
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:
“a lifting and lowering mechanism for lifting and lowering the spindle” (claims 1 and 3);
“a measuring unit moving mechanism for moving the measuring unit back and forth radially between a first position above the outer circumferential edge of the workpiece held on the chuck table and a second position above the workpiece near the central portion of the workpiece out of physical interference with the grinding unit” (claims 1 and 3);
“a grinding controlling section, executing the computer program, for rotating the chuck table holding the workpiece thereon about the table rotational axis and controlling the lifting and lowering mechanism to lower the spindle while rotating the grinding wheel of the grinding unit about an axis of the spindle to bring the plurality of grindstones into abrasive contact with the upper surface of the workpiece and thereby grind the workpiece” (claims 1 and 3);
“a cross-sectional shape calculating section, executing the computer program, for controlling the measuring unit to measure thicknesses of the workpiece at a plurality of predetermined points thereon while controlling the measuring unit moving mechanism to move the measuring unit radially back and forth between the first position above the outer circumferential edge of the workpiece and the second position near the central portion of the workpiece, for calculating a plurality of average thickness values, each average thickness value being an average value of a first measured thickness value acquired when the measuring unit measures the thickness of the workpiece at a select predetermined point on the wafer in a forward radial direction and a second measured thickness value acquired when the measuring unit measures the thickness of the workpiece at the select predetermined point on the wafer in a return radial direction, and for calculating a cross-sectional shape of the workpiece from the plurality of average thickness values at the plurality of predetermined points” (claim 1);
“a tilt adjustment variable calculating section, executing the computer program, for calculating an adjustment variable for the relative tilt of the table rotational axis and the spindle to be adjusted by the pair of adjustment shafts of the tilt adjustment unit in order to bring the workpiece ground by the plurality of grindstones close to a finished shape according to the cross-sectional shape of the workpiece” (claim 1);
*“a cross-sectional shape interpolating section for calculating a cross-sectional shape of a central portion of the workpiece according to a least-squares method from the cross-sectional shape of the workpiece calculated by the cross-sectional shape calculating section and for interpolating the cross-sectional shape of the workpiece according to the calculated cross-sectional shape of the central portion of the workpiece” (claim 2);
“a cross-sectional shape calculating section, executing the computer program, for controlling the measuring unit to measure thicknesses of the workpiece at a plurality of predetermined points thereon other than at a central portion thereof while controlling the measuring unit moving mechanism to move the measuring unit radially back and forth between the first position above the outer circumferential edge of the workpiece and the second position near the central portion of the workpiece, for calculating a plurality of average thickness values, each average thickness value being an average value of a first measured thickness value acquired when the measuring unit measures the thickness of the workpiece at a select predetermined point on the wafer in a forward radial direction and a second measured thickness value acquired when the measuring unit measures the thickness of the workpiece at the select predetermined point on the wafer in a return radial direction, and for calculating a cross-sectional shape of the workpiece other than the central portion thereof from the plurality of average thickness values at the plurality of predetermined points” (claim 3);
“a tilt adjustment variable calculating section, executing the computer program, for calculating an adjustment variable for the relative tilt of the table rotational axis and the spindle to be adjusted by the pair of adjustment shafts of the tilt adjustment unit in order to bring the workpiece ground by the plurality of grindstones close to a finished shape according to the cross-sectional shape of the workpiece, wherein the tilt adjustment variable calculating section calculates the adjustment variable for the relative tilt of the table rotational axis and the spindle according to the cross-sectional shape of the workpiece interpolated by the cross-sectional shape interpolating section” (claim 3).
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.
Claim Rejections – 35 U.S.C. § 112
The following is a quotation 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.
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.
Further, 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) contain 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.
Claim 1 recites the limitation, “a tilt adjustment variable calculating section, executing the computer program, for calculating an adjustment variable for the relative tilt of the table rotational axis and the spindle to be adjusted by the pair of adjustment shafts of the tilt adjustment unit in order to bring the workpiece ground by the plurality of grindstones close to a finished shape according to the cross-sectional shape of the workpiece”, which invokes 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, as discussed above. Similarly, claim 3 recites the limitation, “a tilt adjustment variable calculating section, executing the computer program, for calculating an adjustment variable for the relative tilt of the table rotational axis and the spindle to be adjusted by the pair of adjustment shafts of the tilt adjustment unit in order to bring the workpiece ground by the plurality of grindstones close to a finished shape according to the cross-sectional shape of the workpiece, wherein the tilt adjustment variable calculating section calculates the adjustment variable for the relative tilt of the table rotational axis and the spindle according to the cross-sectional shape of the workpiece interpolated by the cross-sectional shape interpolating section”, which invokes 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, as discussed above.
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. In the specification, the “tilt adjustment variable calculating section” is a part of the control unit, which is a CPU (processor) and a storage device (flash memory or hard drive) (Spec. Fig. 1, element 96; ¶¶ 0035, 0043)). But the specification does not adequately describe how the adjustment variable for the relative tilt is to be calculated according to the cross-sectional shape of the workpiece, as claimed. That is, the procedure or algorithm for this functional limitation is not explained in sufficient detail to allow a person of ordinary skill in the art to understand how the inventor intended the function to be performed and the result to be achieved. Applicant’s amendment “wherein the adjustment variable indicates a degree to which lengths of the pair of adjustment shafts are to be adjusted” does not alter this analysis because it only describes what the “adjustment variable” (the output) is without sufficiently explaining how it is obtained from inputs.
The relevant portions of the specification appear to be the following:
“The tilt adjustment variable calculating section 96 of the control unit 90 calculates degrees to which the adjustment shafts 62 and 64 are to be adjusted in order to make the thickness deviation ‘m’ zero in the graph illustrated in FIG. 4A and also to make the thickness deviation ‘a’ zero in the graph illustrated in FIG. 4B. The grinding controlling section 92 controls the tilt adjustment unit by referring to the degrees calculated by the tilt adjustment variable calculating section 96, to adjust the lengths of the adjustment shafts 62 and 64, thereby adjusting the tilt of the table rotational axis 58.” (Spec. ¶ 0053);
“When the tilt adjustment variable calculating section 96 is to calculate degrees to which the lengths of the adjustment shafts 62 and 64 are to be adjusted, i.e., adjustment variables, the tilt adjustment variable calculating section 96 refers to the thickness distribution of the workpiece 1, i.e., the cross-sectional shape of the workpiece 1. The cross-sectional shape of the workpiece 1 that serves as a reference for calculating the adjustment variables varies at all times while the grinding process for the workpiece 1 is in progress.” (Spec ¶ 0054);
“In this case, the tilt adjustment variable calculating section 96 calculates a degree to which the tilt of the table rotational axis 58 is to be adjusted according to the cross-sectional shape of the workpiece 1 interpolated by the cross-sectional shape interpolating section 98. For example, the cross-sectional shape interpolating section 98 derives an approximate equation representing a height distribution of the upper surface of the workpiece 1 according to the least-squares method from the cross-sectional shape of the portion of the workpiece 1 except the central portion thereof, and calculates a cross-sectional shape of the central portion of the workpiece 1 according to the approximate equation, thereby interpolating the cross-sectional shape of the workpiece 1. In this process, the approximate equation representing the height distribution of the upper surface of the workpiece 1, which is derived according to the least-squares method, also contributes to minimizing the effect of errors and variations that are necessarily caused in thickness values measured at various points on the workpiece 1 by the measuring unit 42a.” (Spec. ¶ 0061);
“Then, according to the approximate equation derived by the least-squares method for the thickness distribution of the workpiece 1, the value of “m” in FIG. 4A and the value of “a” in FIG. 4B are calculated. Thereafter, the tilt of the table rotational axis 58 can be adjusted according to the calculated value of “m” and the calculated value of “a.”” (Spec. ¶ 0064);
“FIG. 6 is a graph schematically illustrating changes over time of a deviation of the thickness of the workpiece 1 being ground and changes over time of a tilt adjustment variable for the table rotational axis 58. The graph has a horizontal axis representing time and a vertical axis representing the magnitudes of various quantities. According to the graph, the second grindstones 20b are brought into abrasive contact with the reverse side 1b of the workpiece 1 to start grinding the workpiece 1 at time A, and the second grindstones 20b stop being lowered to finish grinding the workpiece 1 at time F. In FIG. 6, a broken-line curve 86 represents changes over time of the length of the adjustment shaft 62, i.e., an adjustment variable, and a broken-line curve 88 represents changes over time of the length of the adjustment shaft 64, i.e., an adjustment variable. The solid-line curve 82 represents changes over time of the deviation of the thickness distribution of the workpiece 1 that is represented by the deviation “m” in the graph of FIG. 4A, and the solid-line curve 84 represents changes over time of the deviation of the thickness distribution of the workpiece 1 that is represented by the deviation “a” in the graph of FIG. 4B. The deviation of the thickness distribution of the workpiece 1 is calculated from the thickness distribution of the workpiece 1, i.e., the cross-sectional shape thereof, calculated by the cross-sectional shape calculating section 94 according to the measured thickness values of the workpiece 1 that are measured by the thickness measuring device 42 and interpolated by the cross-sectional shape interpolating section 98.” (Spec. ¶ 0065);
“At time B, the tilt of the table rotational axis 58 starts being adjusted. The tilt adjustment variable calculating section 96 calculates length adjustment variables for the respective adjustment shafts 62 and 64 that function as the tilt adjustment unit by referring to the values of the thickness deviations “a” and “m” of the workpiece 1. The control unit 90 then changes the lengths of the adjustment shafts 62 and 64 according to the calculated length adjustment variables. Specifically, the control unit 90 starts increasing the length of the adjustment shaft 62 at time B and finishes increasing the length of the adjustment shaft 62 at time C. The thickness deviation “m” of the workpiece 1 represented by the solid-line curve 82 gradually decreases from time B and stops being reduced at time C. In the example illustrated in FIG. 6, however, as the grinding process approaches time C, the thickness deviation “m” drops to a level lower than zero, and has a negative value at time C. This is caused by the fact that the length of the adjustment shaft 62 has excessively been adjusted to an unduly increased value. Consequently, the length of the adjustment shaft 62 is slightly cut back at time E, bringing the thickness deviation “m” close to zero.” (Spec. ¶ 0067);
“The length of the adjustment shaft 64 starts being reduced at time B, and finishes decreasing at time D. The thickness deviation “a” of the workpiece 1 represented by the solid-line curve 84 gradually increases toward zero from time B, and stops increasing at time D. In the example illustrated in FIG. 6, however, the thickness deviation “a” has not yet become zero at time D. This is because the length of the adjustment shaft 64 has not sufficiently been adjusted. Consequently, the length of the adjustment shaft 64 is further reduced at time E, bringing the thickness deviation “a” close to zero.” (Spec. ¶ 0068);
“Thereafter, the thickness deviations “a” and “m” remain highly close to zero until time F. When the thickness of the workpiece 1 reaches a finished thickness at time F, the second spindle 14b stops being lowered, bringing the grinding process to an end. At this time, since the thickness deviations “a” and “m” are highly close to zero, the entire workpiece 1 has been ground to a finished thickness highly accurately.” (Spec. ¶ 0069);
“Thereafter, the tilt of the table rotational axis 58 is adjusted such that the workpiece 1 ground by the grindstones 20a and 20b will approach a finished shape. The adjustment variable by which the tilt of the table rotational axis 58 is to be adjusted is calculated according to the calculated cross-sectional shape of the workpiece 1. Specifically, the tilt of the table rotational axis 58 is adjusted to bring the deviations “a” and “m” of the thickness distribution of the workpiece 1 close to zero. Then, while the workpiece 1 is being ground, the tilt of the table rotational axis 58 is adjusted as required until the workpiece 1 that has a predetermined uniform finished thickness is finally obtained.” (Spec. ¶ 0072);
“The tilt adjustment variable calculating section 96 calculates a tilt adjustment variable for the table rotational axis 58 to bring the workpiece 1 ground by the second grindstones 20b close to a finished shape according to the cross-sectional shape of the workpiece 1.” (Spec. ¶ 0076);
“Then, the tilt adjustment variable calculating section 96 calculates a tilt adjustment variable for either the table rotational axis 58 or the spindles 14a and 14b or both. As a result, the tilt adjustment variable calculating section 96 calculates a tilt adjustment variable for adjusting the relative tilt of the table rotational axis 58 and the spindles 14a and 14b with the tilt adjustment unit.” (Spec. ¶ 0078).
These passages are inadequate because they fail to provide sufficient detail about the relationship of the adjustment variable to the cross-sectional shape of the workpiece (i.e., how the adjustment variable for the relative tilt is to be calculated based on the cross-sectional shape of the workpiece). Each of the cited passages above only state the outcome—that a tilt adjustment variable is calculated—without stating how that outcome is achieved other than identifying the inputs.
In other words, although the claimed function of the “tilt adjustment variable calculating section” is understood at a high level, and the inputs (the cross-sectional shape of the workpiece (e.g., thickness deviation values/distribution m and a in Figs. 4A-B)) are understood, and the output (“adjustment variable” (e.g., an adjustment length for the adjustment shafts (as shown in Fig. 6 for example)) is understood, what is not understood is how the output is achieved using the inputs. The specification describes nothing more than a “black box” connecting the inputs with the output.
At best, Fig. 6, provides one example of an adjustment variable relative to a cross-sectional shape of the workpiece. That is, Fig. 6 shows output adjustment variables 86 and 88 (corresponding to the lengths of adjustment shafts 62 and 64 respectively) and inputs 82 and 84 (thickness deviation values/distribution m and a respectively), where the calculation of adjustment variables 86 and 88 begins at time B. However, Fig. 6 does not describe how the output adjustment variables 86 and 88 are actually calculated using inputs 82 and 84. “It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement.” MPEP 2161.01(I). It is not be clear to a person of ordinary skill in the art how the shape of the output curves 86 and 88 between time B and time F (corresponding to the length of two adjustment shafts respectively vs. time), as shown in Fig. 6, is calculated based on the input curves 82 and 84 (corresponding to thickness deviation of m and a respectively vs. time) (see Spec. Fig. 6; ¶¶ 0065-0069).
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Spec. Fig. 6
Thus, the specification (including Fig. 6) does not provide sufficient disclosure as required. The specification must explicitly disclose the algorithm for performing the claimed function; the recitation of the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. MPEP § 2181(II)(B); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (a recitation of a function in the specification merely “describes an outcome, not a means for achieving that outcome”). Applicant should bear in mind that the knowledge or capability of a person of ordinary skill in the art does not relieve an applicant of its duty to disclose sufficient structure to support means-plus-function claim terms. Blackboard, 574 F.3d at 1385 (“A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function. To allow that form of claiming under section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a function”); Atmel Corp. v. Info. Storage Devices., 198 F.3d 1374, 1380 (Fed. Cir. 1999) (“[C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.”); MPEP § 2181(II)(B).
Therefore, claims 1 and 3 are indefinite and are rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph. MPEP § 2181(II)(B). Further, claims 1 and 3 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 because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention. MPEP § 2163.03(VI). Claims 2 and 4-5 are rejected on the basis they incorporate the above limitation of claim 1 or claim 3.
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 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 C.F.R. § 1.75(d) and MPEP §§ 608.01(o) and 2181.
Allowable Subject Matter
Claims 1-5 would be allowable if rewritten to overcome the rejections under 35 U.S.C. § 112(a) and (b), as set forth in this Office action. Examiner’s reasons for allowance are stated in the 10/29/2025 Office Action.
As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 1-5 are pending. Claims 1-5 are rejected.
Claims – The objections to claims 1 and 3 are withdrawn in view of Applicant’s amendments.
Response to Arguments
Applicant’s argument regarding the § 112(a) and (b) rejections have been fully considered but are not persuasive for the reasons stated in the rejections above. To be clear, this is not based on the determination of thickness derivation values m and a—how these are determined appears to be sufficiently disclosed (i.e., the “cross-sectional shape calculating section” and the “cross-sectional shape interpolating section”). But how the “adjustment variable” is calculated using these thickness derivation values m and a is not sufficiently disclosed. Notably, Applicant appears unable to cite any additional disclosure for support; instead, Applicant states in a conclusory manner, “Then...the value of “m” in FIG. 4A and the value of “a” in FIG. 4B are calculated. Thereafter, the tilt of the table rotational axis 58 can be adjusted according to the calculated value of “m” and the “calculated value of “a” by the tilt adjustment variable calculating section 96” (Reply at 8). What is missing here is the part glossed over by the word “Thereafter”. The question remains: How is the tilt adjustment variable calculated using m and a as inputs?
If Applicant contends that there is sufficient disclosure for an algorithm to transform the disclosed general purpose computer to a special purpose computer so that a person of ordinary skill in the art can implement the disclosed algorithm to achieve the claimed function, thereby satisfying the written description requirement, Applicant should clearly articulate and cite such support, describing how the adjustment variable for the relative tilt is to be calculated according to the cross-sectional shape of the workpiece as claimed.
Conclusion
THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 C.F.R. § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723