Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 limitations are: a reference identification device operating without contact, and, a reference measuring device, in claims 1, 4, and 11.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Thus, the reference identification device is interpreted as comprising at least one inductive, capacitive, optical, or meshing sensor configured to directly sense a mark on the first gearing without contacting the first gearing, or configured to directly sense tooth tips and grooves on the first gearing without contacting the first gearing. The reference measuring device is interpreted as a tactile or optical sensor configured to directly measure the tooth structure of the first gearing.
If applicant does not intend to have these limitations 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.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 1-3, 5-8, 12, 30, and 32-33 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 applicant regards as the invention.
Claim 1 recites the sensor carrier having a reference measuring device and at least part of a reference identification device operating without contact mounted thereon. It’s unclear if both the reference measuring device and reference identification device operate without contact, or only the reference identification device. Since claim 5 recites the reference measuring device is a tactile sensor, this claim will be interpreted as only the reference identification device operating without contact.
Claim 1 also recites a reference identification device in each of lines 5 and 8. It is unclear if the device in line 8 is referring to the device in line 5, or if another/second device is being introduced.
The rest of the claims are rejected for depending from claim 1.
Rejections under 35 USC 1032
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 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 obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 5, 7, 12, and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2018/0236576 (“Tachikawa”) in view of USPGPub No. 2019/0232406 (“Predki”).
Regarding claim 1, Tachikawa teaches a method of machining a workpiece having first and second gearings (paras. [0010], [0018] & [0056]), the workpiece being mounted for rotation about a workpiece axis (fig. 1, paras. [0025]-[0026], [0033] & [0043]), the method comprising: measuring the at least one reference tooth structure with a reference measuring device (P) to determine a reference rotational angular position of the workpiece (figs. 5a-5c, paras. [0063]-[0068]); and machining the second gearing with a machining tool in such a way that the second gearing obtains a rotational angular position that is in a predetermined relationship to the determined reference rotational angular position (para. [0056], wherein the second processing can be cutting teeth in the second gear wherein the teeth of the first and second gears must have a specific phase relation).
Tachikawa fails to explicitly teach identifying at least one reference tooth structure of the first gearing with a reference identification device operating without contact. However, this would have been obvious in view of Predki.
Predki is directed to the automated positioning of toothed workpieces (para. [0002]). Predki teaches providing a machine readable and workpiece-specific marking 4 on each gear (fig. 1, para. [0060]). Unique markings help identify individual gears to track it along the value chain and to keep workpiece-specific data on each gear (paras. [0003]-[0004]). The marking 4 on the gear also allows each gear to be properly positioned in subsequent manufacturing steps by storing information regarding the distances of the marking from a first tooth gap (paras. [0063]-[0065]). Predki teaches an optical, capacitive, or inductive sensor to acquire the marking when the gear is on a spindle to determine the actual rotational position of the gear on the spindle with respect to a tactile sensor 14 to measure the tooth flanks of the first tooth gap (figs. 5-6, paras. [0066]-[0070]).
In this case, Tachikawa teaches to perform a first gear cutting process on a first gear (i.e. cutting teeth), and to subsequently perform a second process on the workpiece (fig. 1, paras. [0018] & [0044]). The second process can be cutting teeth in the second gear (para. [0056]). Prior to performing the second processing, the rotational position of the tooth grooves and tips created by the first cutting process are determined to provide a specific phase relation between tooth grooves of the two gears (para. [0049], [0052] & [0056]). While one embodiment of Tachikawa teaches to determine the position of the workpiece and teeth via calculation, Tachikawa teaches that calculations may not always be accurate and that the position of the teeth can also be measured via a tactile sensor to improve accuracy of the second process (paras. [0063] & [0070]). Predki teaches that providing a unique marking on the gear can help determine the rotational position of the gear for a subsequent tactile sensor, and provides other benefits such as track individual gears along the value chain and to keep workpiece-specific data on each gear during manufacturing. Tachikawa also teaches that it is known and predictable to increase efficiency of utilizing a tactile sensor by first using a non-contact sensor to determine a tooth tip or tooth groove, and then using the tactile sensor to detect a surface of a tooth groove (para. [0004]-[0006]). Thus, the for the advantages stated above (i.e. increasing efficiency of the tactile sensor step, tracking individual gears along the value chain, and keeping workpiece-specific data on each gear during manufacturing), it would be obvious to apply a unique marking to the first gear, wherein the distances between the marking and first tooth gap are known, and sensing the marking after the first cutting operation with an optical sensor so that the accuracy of the calculated position of the workpiece can be determined, and so the workpiece of Tachikawa can be better positioned so the tactile sensor of Tachikawa can be more accurately inserted into the first tooth gap.
The examiner notes that, as detailed above, Tachikawa in view of Predki teach the measuring step happening after the identifying step and before the machining step.
Tachikawa et al. fail to explicitly teach moving a sensor carrier from a parking position to a measuring position, the sensor carrier having a reference measuring device and at least part of a reference identification device operating without contact mounted thereon. However, this would be obvious.
Tachikawa teaches that the processing portions may comprise multi-jointed robots (¶ [0032]). One of skill in the art appreciates that multi-jointed robots are well known in manufacturing/machining and allow for up to six degrees of freedom. Thus, it would be obvious to modify Tachikawa et al. so that the sensors are moved into a measuring position (i.e. moved from a parking position to a measuring position) via a multi-jointed robot. This can allow more freedom to position the sensors compared to other sensor carriers.
While this fails to teach both sensors being on the same sensor carrier, i.e. same multi-jointed robot, it is obvious to combine known elements to yield predictable results, wherein each element merely performs the same function as it did separately (see MPEP 2143(I)(A)). In Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, the court held it was obvious to combine known prior art elements on the same chassis since combining one structure (in this case a radiant-heat burner) with the others was not critical or essential to functioning of the radiant-heat burner. While combining the elements on one device/structure was perhaps a great convenience, it did not produce a new or different function, and no synergistic result was argued. In this case, positioning each of the sensors of Tachikawa et al. on a common sensor carrier, while possibly convenient, does not produce a new or different function and no synergistic result is produced. Thus, it is obvious to combine the sensors of Tachikawa so that they are on the same carrier/robot.
The examiner notes that the moving step will logically happen first since the moving step is required to position the sensors in a suitable position.
Claim 2 recites the workpiece comprises a marking, wherein the reference identification device comprises a marking detection device operating without contact, and wherein identifying the at least one reference tooth structure of the first gearing comprises: detecting the marking of the workpiece with the marking detection device; and identifying the at least one reference tooth structure of the first gearing by means of the detected marking. These limitations are taught by the rejection to claim 1, above. Specifically, Predki was used to provide a marking on the first gearing of Tachikawa, and a marking detection device is used to detect the marking in order to determine the position of a first tooth gap, i.e. reference tooth structure.
Regarding claim 5, Tachikawa further teaches the reference measuring device comprises a tactile sensor (fig. 5, para. [0064]-[0067]).
Claim 7 recites the second gearing is machined by a generating machining process. Tachikawa teaches to use skiving to create the gear teeth on the second gearing (para. [0056]). The examiner is taking Official Notice that it is well known in the art to create gear teeth via a generating skiving process, or other generating process such as hobbing. Thus, it would be obvious and predictable to create the teeth on the second gear via a generating process such as skiving or hobbing.
Claim 7 further recites a rolling coupling angle for the generating machining process is determined using the previously determined reference rotational angle position of the workpiece. Tachikawa teaches using the determined rotational position of the workpiece to accurately position the gear and the tool therefore (which includes the rolling coupling angle) (paras. [paras. [0044]-[0049], [0054] & [0056]).
Regarding claim 12, Tachikawa further teaches the first gearing and the second gearing are external gearings; wherein the first gearing and the second gearing are internal gearings; wherein the first gearing is an internal gearing and the second gearing is an external gearing; or wherein the first gearing is an external gearing and the second gearing is an internal gearing (fig. 1, wherein the two gearings are external gearings).
Claim 32 recites moving the sensor carrier between the parking position and the measuring position comprises swiveling the sensor carrier about a swivel axis. As detailed in the rejection to claim 1, above, the sensor carrier is moved via a multi-jointed robot. Since multi-jointed robots move via rotating/swiveling of the joints, moving the sensors from the parking position to the measuring position includes swiveling the sensor carrier about at least one of the joints.
Regarding claim 33, Tachikawa et al. further teach the marking detection device comprises an inductive, capacitive or optical sensor (see rejection to claim 1, above, i.e. optical sensor).
Claims 1-2, 5, 7-8, 12, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Tachikawa in view of Predki and USPGPub No. 2022/0274193 (“Minas”).
As detailed in the previous rejection to claim 1, above, Tachikawa in view of Predki teach all the limitaitons except for moving a sensor carrier from a parking position to a measuring position, the sensor carrier having a reference measuring device and at least part of a reference identification device operating without contact mounted thereon. However, this would be obvious in view of Minas.
Minas is also directed to finishing two different toothings on a workpiece (para. [0001]). Minas teaches three sensors 110, 120 & 130 that are each fixed to a common/retractable support arm, can be movably arranged via slides, or combinations thereof (fig. 4, ¶ [0041]).
In this case, each of Tachikawa et al. and Minas are directed to finishing two different toothings on a workpiece, wherein multiple sensor are used during the process. Minas teaches that a plurality of sensors can all be attached on a single retractable support arm. Minas also teaches that it is known for sensors to be movable. Thus, to reduce the total amount of parts, it would be obvious to modify Tachikawa et al. so that all the sensors are fixed to a single retractable support arm. It is predictable to fix the sensors at different positions relative to the support arm so that each sensor can perform its intended function, and/or movably fix at least one sensor to the support arm so that it can move to a usable position.
Given the above modification, the initial step of the process would be moving the sensor carrier from a retracted/parking position into a measuring position.
Claims 2, 5, 7, 12 and 33 are rejected for the same reasons as the previous rejection of Tachikawa in view of Predki.
Regarding claim 8, Tachikawa et al. fail to explicitly teach testing the first gearing with a non-contact first meshing sensor while the workpiece rotates about the workpiece axis; and/or testing the second gearing with a non-contact second meshing sensor while the workpiece rotates about the workpiece axis. However, this would have been obvious in view of Minas.
Minas is directed finishing two different toothings on a workpiece (para. [0001]). When securing the workpiece on a finishing device, Minas determines the rotational positions of the tooth gaps of each toothing and of a marking 3 on one of the gears (figs. 1-2 & 4, paras. [0040]-[0041]). The finishing device comprises three non-contact sensors which respectively determine the rotational positions of the tooth gaps of the toothing 2, of the marking 3, and of the tooth gaps of the toothing 1. The sensors can be non-contact inductive sensors (para. [0040]), which reads on a non-contact meshing sensor.
In this case, Tachikawa et al. teach cutting the teeth on the first and second gears and providing a marking, wherein the positions of the teeth and marking are calculated/determined. One of skill in the art appreciates that numerous processing steps can occur after the initial cutting of teeth. Minas teaches that it is known to perform a hard finishing step on the gear teeth. Hard finishing is often a later processing step that can occur after other steps such as hardening and other machining steps (that can change the shape of the toothings). Minas teaches a hard finishing machine that is capable of determining the rotational positions of a marking and tooth gaps of each toothing. Thus, it would be obvious to modify Tachikawa et al. to form a hard finishing process on the workpiece whereby the hard finishing machine comprises three non-contact meshing sensors to determine the rotational positions of the toothings, along with the position of the marking. Determining the rotational positions will allow Tachikawa to check/test the previously determined rotational positions and to see if any changes occurred after processing steps before the hard finishing but after the initial cutting of teeth.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tachikawa et al. as applied to either rejection of claim 5, above, and further in view of USPGPub No. 2015/0071722 (“Milletari”).
Regarding claim 6, Tachikawa further teaches the tactile sensor comprises a probe tip (figs. 5A-5C). Tachikawa fails to explicitly teach the tactile sensor comprises a sensor base, and wherein the probe tip is extended relative to the sensor base to be brought into engagement with the first gearing along an insertion direction. However, this would have been obvious in view of Milletari.
Milletari also teaches sensors 31-34 for gears that are configured to contact the gear (figs. 1 & 3, paras. [0028]-[0029] & [0038]). The sensors 31-34 each comprise a tip 31A-34A that is attached to a base via a rod that extends and retracts with respect to the sensor base (figs. 1 & 3, paras. [0035] & [0037]-[0038]).
In this case, each of Tachikawa et al. and Milletari are directed to measuring gears by extending a sensor to contact the gear. While Tachikawa only shows the probe tip on a rod, it does not teach the rest of the sensor structure (see fig. 5A). Milletari teaches a known and predictable way of extending a probe tip to make contact with a gear (i.e. the rod with the probe tip being movably connected to a sensor base such that it can extend and retract with respect to the sensor base). Thus, it would be obvious to modify Tachikawa so that the rod illustrated in figs. 5A-5C was attached to a sensor base such that it can extend and retract with respect to the sensor base.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Tachikawa et al. as applied to either rejection of claim 1, above, and further in view of USPGPub No. 2004/0099056 (“Wirz”).
Regarding claim 30, Tachikawa fails to explicitly teach the reference measuring device comprises an optical sensor. However, this would be obvious in view of Wirz.
Wirz is also directed to aligning a workpiece with a gear processing tool (paras. [0001] & [0008]). Wirz teaches to determine the angular position of teeth via a non-contact sensor such as an optical sensor (para. [0004]).
In this case, each of Tachikawa and Wirz are directed to aligning a workpiece with a gear processing tool by sensing the location of at least one tooth location. While Tachikawa teaches using a tactile sensor, Wirz teaches one of skill in the art that it is predictable to use an optical sensor. Thus, it would be obvious to substitute an optical sensor for the tactile sensor.
Allowable Subject Matter
Claims 4, 11, and 34-36 are allowed. Claims 4 and 11 were deemed allowable in the Office action mailed on October 1, 2025.
Claim 3 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed March 31, 2026 (“the remarks”) have been fully considered. The examiner agrees that the amendments to the claims overcome the previous prior art rejections. Thus, the previous prior art rejections are withdrawn (the current rejection still relies on Tachikawa in view of Predki, however, additional modifications were made compared to the previous rejection). The examiner also notes that the interpretation of a reference identification device has been modified to make clear that it can comprise more than one sensor and can comprise a meshing sensor.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 CFR 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 Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights