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 .
Statement re Text of U.S. Code
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
In the response filed November 27, 2024, Applicant elected Group I, drawn to a machine. Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 27, 2024.
Comment on Manner of Making Amendments
It is noted that Applicant’s specification amendments filed 6/10/2025 included instructions to replace paragraphs 0027 and 0028 “of the published version of the application” with the replacement paragraphs included in the amendment. However, it is noted that care should be taken in the future to reference the page and line numbers of the most recent substitute specification, rather than paragraph numbers of the published application, to make sure that the most recent version of a given paragraph is being replaced/amended.
Response to Amendment
The amendment filed June 10, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention.
The added material (added June 10, 2025) which is not supported by the original disclosure is as follows:
It is noted that the added sentence to the abstract to indicate that “[T]he first and second workpiece table are each able to position the workpieces, for example with magnetic holders and stops” adds new matter, as does the amendments to “paragraphs 0027 and 0028 of the published version of the application” to indicate that the table in Figure 2 is also second table 12, and to indicate that the second table 12 includes positioning means 13 that are the magnetic holders 19 and stops 20, and to indicate that the workpiece table 12 is designed with a smooth surface in the direction of the workpieces 9, as does the change to indicate that a not-shown bellows seal is located between the workpiece table 12 and its substructure with supports the drive, the toothed rack, and the pinion, to protect such from contamination.
Likewise, the amendment filed December 29, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention.
The added material (added December 29, 2025) which is not supported by the original disclosure is as follows: the changes to Figure 2 to add the reference character 13 (three occurrences), to now indicate (as set forth in the amendment filed 6/10/2025 to “paragraphs 0027 and 0028 of the published version of the application”) that the elements indicated in amended Figure 2 by reference character 13 are the positioning means that are the magnetic holders 19 and stops 20 of the second table 12.
Regarding both the above-discussed new matter added 6/10/2025 and the above-discussed new matter added 12/29/2025,
On pages 8-9 of the reply filed 12/29/2025, Applicant points to paragraphs 0023 and 0024 “of the published specification” and Figure 2 as providing support for the changes to the abstract and specification and Figure 2. However, it is noted that neither the paragraphs 0023 and 0024 (which paragraph numbers are with respect to the published version of the application, which is not the specification as originally filed), nor the paragraphs found at page 6, line 21 through page 7, line 14, of the specification as originally filed, nor the Figures of the application as filed, serve to teach that the second workpiece table 12 is “able to position the workpieces, for example with magnetic holders and stops”, as now set forth in the amended abstract, and as now similarly set forth in the specification amendments to “paragraph 0027 of the published version of the application”, nor is such inherent. While the specification as filed does teach that the first workpiece table 7 has magnetic holders 19, together with rear and side stops 20 for workpieces 9, which together form the first positioning means 8 (Figure 2) (page 7, lines 4-6, of the specification as originally filed), the specification as filed does not teach that the second workpiece table 12 is “able to position the workpieces, for example with magnetic holders and stops” nor that the second workpiece table 12 includes a second positioning means that is in the form of magnetic holders 19 and stops 20, nor is such inherent. Note also that the specification as filed (on at least page 7, lines 7-14 of the specification as originally filed, for example) expressly teaches that the workpiece tables 7, 12 “can also be designed differently from one another”.
Furthermore, it is noted that neither the paragraphs 0023 and 0024 (which paragraph numbers are with respect to the published version of the application, which is not the specification as originally filed), nor the paragraphs found at page 6, line 21 through page 7, line 14, of the specification as originally filed, nor the Figures of the application as filed, serve to teach the amendments to “paragraphs 0027 and 0028 of the published version of the application” and to Figure 2 to indicate that the table 7 in Figure 2 is also second table 12, and to indicate that the second table 12 includes positioning means 13 that are the magnetic holders 19 and stops 20, and (the amendments to paragraphs 0027 and 0028 of the published version of the application) to indicate that the workpiece table 12 is designed with a smooth surface in the direction of the workpieces 9, and to indicate that a not-shown bellows seal is located between the workpiece table 12 and its substructure with supports the drive, the toothed rack, and the pinion, to protect such from contamination. Furthermore, such is not inherent. Additionally note that the specification as filed (on at least page 7, lines 7-14 of the specification as originally filed, for example) expressly teaches that the workpiece tables 7, 12 “can also be designed differently from one another”.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
It is noted that the previous objection to the drawings for failing to include the reference character 13 mentioned in the specification is withdrawn, given the amendments to Figure 2 that were submitted December 29, 2025 (though those amendments to Figure 2 are objected to under 35 USC 132 hereinabove for introducing new matter).
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
the ability of the first and second workpiece table to be “coupled to one another” as set forth in claim 1;
wherein each of the first and second workpiece table has two drives that operate in opposite directions, as set forth in claim 1 (note that no such drives are shown);
wherein each of the first and second workpiece table has two drives that “operate at an angle which is the same”, as set forth in claim 1;
the “drives” of claim 4;
the “rack-and-pinion connection” (of each of the drives) of claim 4;
the “robot in the first preparation area, the robot being designed for the loading of the first workpiece table with the workpieces, cleaning of the first workpiece table, and the removal of the workpieces from the first workpiece table”, as set forth in claim 6;
the “first and second workpiece tables of different lengths” as set forth in claim 7 (and thus claim 11) (and it is particularly noted that page 8, lines 3-4, of the clean copy of the substitute specification filed 10/24/2022, sets forth that “[W]hat is illustrated is an inventive machine with two workpiece tables of equal length…”); and
the “first and second workpiece tables” that have different lengths of “1250 mm, 1750 mm, 2250 mm or 2750 mm”, as set forth in claim 11.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim Rejections - 35 USC § 112
Claims 1, 4-7, 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “second positioning means for workpieces” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. 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 particular, the specification is devoid of adequate structure to perform the claimed function. Note that while the specification (see clean copy of substitute specification filed 10/24/2024 re specific page and line numbers, though it is also noted that this is consistent with the teachings of the specification as originally filed) teaches that the first workpiece table 7 has magnetic holders 19 and rear and side stops 20, which together form the first positioning means 8 (see Figure 2 and page 7, lines 16-20, as well as page 8, lines 15-17), the specification is devoid of any teaching of structure to perform the claimed function re the claimed “second positioning means” (referred to on page 7, line 23 of the 10/24/24 clean specification as “13”, but not shown) re the second workpiece table 12. Note that the drawings do not provide a view of the second workpiece table 12 that shows any such second positioning means, and note that there is no teaching in the specification that the second positioning means are (nor the second workpiece table as a whole) are identical to the first positioning means (nor the first workpiece table as a whole, respectively). In contrast, in the paragraph spanning pages 7-8, while the specification teaches that the second preparation area 11 is “designed to be the same as the first preparation area 6”, the specification expressly teaches that the workpiece tables 7, 12 “can also be designed differently from one another”. In any event, there is no disclosure of any particular structure, either explicitly or inherently, to perform the claimed function of “positioning” workpieces re the second workpiece table (12). As would be recognized by those of ordinary skill in the art, there are many different ways to effect workpiece positioning. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which structure(s) perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
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 the 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 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
There are several positively recited limitations that lack sufficient antecedent bases in the claims. Examples of this are:
“the loading of the first workpiece table with the workpieces” in claim 6, lines 2-3 (noting that no such “loading” was previously recited); and
“the removal of the workpieces from the first workpiece table” in claim 6, lines 3-4 (noting that no such “removal” was previously recited).
This is not meant to be an all-inclusive list of such occurrences. Applicant is required to review the claims and correct any other such occurrences of limitations lacking sufficient antecedent basis.
Claims 1, 4-7, and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1 and the recited “second positioning means for workpieces”, as discussed above, this limitation invokes 35 USC 112(f). As described above in a rejection of claim 1 under 35 USC 112(b), the disclosure does not provide adequate structure to re the second workpiece table and second positioning means to perform the claimed function of positioning workpieces. That said, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Claim Rejections - 35 USC § 102
Claims 1 and 4-7, as best understood in view of the above rejections based on 35 USC 112, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2019/0009380 to Sugiyama (hereinafter, “Sugiyama”).
Sugiyama teaches a machine capable of performing the claimed function of milling (paragraphs 0099, 0113, 0115-0116, 0121, for example), or alternatively, capable of performing the claimed function of grinding (paragraph 0084, for example) of toothed racks (it is noted that the machining tool(s) mounted to the spindle 12 of machining head 6 is considered to be at least inherently capable of performing the claimed function of milling or grinding toothed racks by virtue of the machining portion(s) of the aforementioned machining tool(s), noting that the machining tools are blind as to what the workpiece is on which they machine, but rather, such machining tools are inherently capable, by virtue of their machining portions, of machining whatever workpiece with which they are brought into operative contact; see paragraph 0084, for example),
the machine having a workspace (as broadly claimed, such as, for example, the “space”/area in which the machining tool 2 and/or the processing head 6 thereof are located; see, for example, Figures 1-2 and 4, as well as at least paragraphs 0046-0049, for example) in which a machining head (such as, for example, 6) carrying at least one milling tool (see paragraphs 0099, 0113, 0115-0116, and 0121, for example) and/or at least one grinding (see paragraph 0084) tool is movably arranged (see Figures 1-2 and 4, and paragraphs 0046-0048, noting that machining head 6 is movable in Z, and is additionally pivotable re the “multi-axis” state of the spindle 12 and the five controlled axes, i.e., which thus include two pivot axes, as disclosed in at least paragraphs 0046-0048),
the machine further having a first preparation “area” (such as, for example, the “area” to the left of 2 in Figure 12 and in which the table 5 labeled as “A” is located) arranged on a first side (such as the left side re Figures 1-2 and/or 12) of the (aforedescribed) “workspace”,
the (aforedescribed) first preparation area having a first workpiece table (such as the table 5 labeled as “A”; see Figures 1-2 and 12 and paragraphs 0046-0050 and 0074-0078, for example) which is movable (i.e., able to be moved) out of the (aforedescribed) first preparation area into the (aforedescribed) workspace (i.e., by moving in the X direction labeled in Figures 1-2, which is the left/right horizontal direction re Figure 12; see paragraphs 0046-0048, 0050-0051, and 0061-0063, especially paragraphs 0047 and 0061-0063 and paragraphs 0074-0078),
the first workpiece table having a first positioning means (see at least paragraphs 0015 and 0060, for example, re the structure/clamping “means”, to use the verbiage of Sugiyama, by which the workpiece 7 is fixed to the machine table 5) for workpieces (7),
wherein the machine has a second preparation area (such as, for example, the “area” to the right of 2 in Figure 12 and in which the linked table 5 labeled as B+C is located; see at least paragraphs 0043 and 0074-0078 and Figure 12) arranged on a second side (such as the right side re Figures 1-2 and 12) of the (aforedescribed) workspace,
the second preparation area having a second workpiece table (such as the table formed by the two linked tables 5, 5, labeled as B and C in Figure 12; see Figures 1-2 and paragraphs 0046-0050, 0073, and 0074-0078, as well as Figure 12, for example) which is movable (i.e., able to be moved) out of the (aforedescribed) second preparation area into the (aforedescribed) workspace (by moving in the X direction labeled in Figures 1-2, which is the horizontal left/right direction re Figure 12; see paragraphs 0046-0048, 0050-0051, 0061-0063, and 0074-0078, especially paragraph 0063), and
the second workpiece table having a second positioning means (see at least paragraphs 0015 and 0060, for example, re the structure/clamping “means”, to use the verbiage of Sugiyama, by which the workpiece 7 is fixed to the machine table 5) for workpieces (7),
wherein the first (such as the table 5 labeled in Figure 12 as “A”) and second (such as the linked tables 5,5 labeled in Figure 12 as B+C) workpiece table are able to be coupled to one another and are movable together (see, for example, Figure 2, Figure 3, especially Figure 12, and paragraphs 0020, 0027, 0054, 0066-0069, 0076, 0078, and 0082, especially paragraphs 0076, 0078, and 0082, for example),
wherein each of the first and second workpiece table has two drives that operate in opposite directions or operate at an angle which is the same (and it is noted that it is only necessary to meet one of the alternatives in order to meet the claim language).
Considering the table 5 in Figure 12 that is labeled as “A” to be the “first” workpiece table and the two linked tables 5, 5 (labeled as “B” and “C” in Figure 12) to be the “second” workpiece table (see Figure 12, as well as at least paragraphs 0043 and 0074-0078, for example), with the “area” to the left of 2 in Figure 12 being the “first” preparation area, and the “area” to the right of 2 in Figure 12 being the “second” preparation area, it is noted that each of the tables 5 (re A and re the tables 5 of B and C re the table B+C) has its own drive/feed motor 15 (paragraph 0051, paragraph 0080, for example) such that the workpiece table B+C, for example, has two drives (15, 15) that “operate in” (i.e., are able to be operated in) opposite directions or operate “at an angle which is the same”, as broadly claimed. For example, it is noted that the motors/drives 15 are capable of causing the movement of the tables in both the left and right directions along the X axis, and thus, the motors/drives 15, 15 of the table B+C are capable of operating “in opposite directions”, in that both motors 15, 15 of the table B+C are capable of being driven in a direction so as to cause movement towards the left re Figure 12, and both motors 15, 15 of the table B+C are capable of being driven in a direction so as to cause movement towards the right re Figure 12. Alternatively/additionally, it is noted that the motor 15 of the table 5 labeled as B of the overall table B+C is located at an opposite end/half/side (i.e., the left side of B+C re Figure 12) of the table B+C from the end/half/side of B+C where the motor 15 of the table 5 labeled as C of the overall table B+C is located (i.e., the right end of B+C re Figure 12). See Figures 12 and 4, as well as at least paragraphs 0051 and 0080, for example. Alternatively, it is noted that the two drive motors 15, 15 of the overall table B+C of Figure 12 can be considered to be able to operate “at an angle which is the same”, as broadly claimed, so as to drive their respective output shafts 33 and pinions 14 at the same time so as to cause the table B+C to move in X. See Figures 4, 6-7, 12, and paragraphs 0049-0054, 0068, 0078-0081, for example. Additionally, attention is directed to paragraph 0128, which teaches that plural feed devices, each including a feed motor and a pinion gear, can be attached to both the left and right ends of each table 5 (and thus also plural feed devices provided to table A), such as a high-speed feed motor being attached to one side of the table, and a feed motor for high torque being attached to the other size of the table. Such feed motors are also considered to be capable of operation “in opposite directions”, as broadly claimed, and/or “at an angle which is the same”, as broadly claimed. For example, it is noted that the motors/drives for each of the tables (including the table 5 that is labeled as “A” in Fig. 12) are capable of causing the movement of the table in both the left and right directions along the X axis, and thus, the motors/drives (taught by at least paragraph 0128) of the table A are capable of operating “in opposite directions”, in that both motors of the table A are capable of being driven in a direction so as to cause movement towards the left re Figure 12, and both motors of the table A are capable of being driven in a direction so as to cause movement towards the right re Figure 12. See at least Figure 12, Figure 4, paragraphs 0051, 0080, and 0128, for example. Alternatively, it is noted that the two drive motors of the table A of Figure 12 can be considered to be able to operate “at an angle which is the same”, as broadly claimed, so as to drive their respective output shafts 33 and pinions 14 at the same time so as to cause the table A to move in X. See Figures 4, 6-7, 12, and paragraphs 0049-0054, 0068, 0078-0081, and 0128, for example.
Regarding claim 4, each of the drives (15) has at least one rack-and-pinion connection (see Figures 4, 6, and 7, as well as paragraphs 0050-0052 and 0128, for example, noting the connection of each of the drives 15 to a rack 13 and to a respective pinion gear 14, and noting that paragraph 0128 expressly teaches that feed devices including a feed motor and pinion gear are attached to both the left and right ends of each table).
Regarding claim 5, the machine has a wall (25) (see Figure 11, paragraphs 0072-0073 especially noting that paragraph 0073 teaches that the shutter 25 is located between the workpiece changeover position and the workpiece machining position) provided between the (aforedescribed) workspace and the (aforedescribed) first preparation area, the wall “having” a passage opening that is larger than the outline of the (aforedescribed) first workpiece table (5) (see paragraph 0072-0073, noting that per paragraph 0073, when it is time to move the workpiece 7 and table 5 from the workpiece changeover position to the machining position or vice versa, shutter 25 is raised to allow the passage of the table 5 and workpiece thereon, which is considered to be/create a “passage opening” that is larger than an outline of the aforedescribed first workpiece table).
Regarding claim 6, the machine has a robot (the “workpiece handling devices” taught by at least paragraphs 0060, 0062-0063, noting that Sugiyama teaches that a workpiece handling device is provided at each workpiece changeover position, i.e., one to each of the aforedescribed “preparation areas”, and it is further noted that such a workpiece handling device is, as broadly claimed, a “robot”), in the first preparation area (again noting that Sugiyama teaches that a workpiece handling device is provided at each workpiece changeover position, and thus, at each of the aforedescribed “preparation areas”), the robot being “designed for” (i.e., capable of) the loading of the (aforedescribed) first workpiece table (5) with the workpieces (7) (see paragraphs 0060, 0062-0063, especially 0063), cleaning of the first workpiece table (note that the ability of the robot to remove things, such as workpieces, from the table 5 is likewise an ability to “clean” the table 5, as broadly claimed, such as by removing additional workpieces or other similarly shaped and sized items from the table, for example), and the removal of the workpieces (7) from the (aforedescribed) first workpiece table (5) (see paragraphs 0060 and 0062-0063, especially 0062).
Regarding claim 7, considering the table 5 in Figure 12 that is labeled as “A” to be the “first” workpiece table and the two linked tables 5, 5 (labeled as “B” and “C” in Figure 12) to be the “second” workpiece table (see Figure 12, as well as at least paragraphs 0043 and 0074-0078, for example) as described above, with the “area” to the left of 2 in Figure 12 being the “first” preparation area, and the “area” to the right of 2 in Figure 12 being the “second” preparation area, it is noted that the machine has workpiece tables of different lengths (see Figure 12 and at least paragraph 0076, noting that the “first” table A is shorter than the “second” table B+C). Alternatively/additionally, note that paragraph 0026 teaches that tables of “various sizes” can be selected.
Claim Rejections - 35 USC § 103
Claim 11, as best understood in view of the above rejections based on 35 USC 112, is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2019/0009380 to Sugiyama (hereinafter, “Sugiyama”) as applied to at least claim 1 above.
Sugiyama teaches all aspects of the presently-claimed invention as were discussed in the above rejections based thereon.
Additionally, regarding claim 11, it is noted that Sugiyama teaches that the machines can be applied re small, medium, and large configurations (paragraphs 0104-0105), and also teaches that tables of “various sizes” can be selected (paragraph 0026), and that it is easy to change or combine the number of tables (paragraph 0026). Additionally, paragraph 0083 teaches that re Figure 14, four (A, B, C, D), or even more than four tables 5 can be arranged on the base 3. See also paragraphs 0124-0127. Sugiyama also teaches modularity in that Sugiyama teaches that the tables 5 are detachably installed on the linear ways 4 such that tables 5 can be freely added to or removed from the linear ways. See paragraph 0026, for example.
However, while Sugiyama teaches that tables of various sizes can be selected (paragraph 0026), and teaches that four or more tables 5 can be used, Sugiyama does not expressly teach that the machine has two workpiece tables with lengths (that are the same or different) of 1250 mm, 1750 mm, 2250 mm, or 2750 mm, as set forth in claim 11.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made two (or more) of the four or more tables taught by Sugiyama be whatever lengths were desired by an end user (in order to be able to tailor the table size to the workpiece size(s) being machined, for example, as Sugiyama does teach machining workpieces of varying sizes and on varying scales), including the claimed lengths of 1250 mm, 1750 mm, 2250 mm, and/or 2750 mm, particularly since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the machine of Sugiyama would not operate differently with two (or more) or four of the tables being of the claimed dimensions, noting that such would merely be a specific set of two (or more or four tables), and Sugiyama already teaches four or more tables (as noted above), and teaches that tables of various sizes can be used. Further, applicant places no criticality on the particular sizes claimed, noting that Applicant teaches that the tables can be different lengths, or that the tables can all be the same length (page 6 of the clean substitute specification filed 10/24/22, lines 6-14, and particularly lines 9-11 and 13-14), and even teaches (page 6, lines 13-14 and page 8, lines 1-2) that tables of the same length are preferred. See also page 8, lines 3-4, which teaches a configuration with two tables, each being of equal length at 1250 mm.
Response to Arguments
Applicant's arguments filed December 29, 2025 have been fully considered but they are not persuasive.
Regarding the objections to the drawings under 37 CFR 1.83(a) for failing to show various claim subject matter, Applicant has stated (on page 6 of the 12/29/2025 response) the following:
This drawing objection is again traversed. According to MPEP section 608 and 35 U.S.C. 113, a drawing is required when the drawing is necessary for the understanding of the claimed invention.
Applicant goes on to indicate (page 6 of the 12/29/2025 response) that “one of ordinary skill in the art would clearly understand” the not-shown claimed subject matter “without a drawing”, and makes similar further statements on pages 7-8 (of the 12/29/2025 response) about various not-shown elements of the claims being “known” to or understood by those of “ordinary skill in the art”.
However, this is not persuasive. Firstly, attention is directed to 37 CFR 1.81, noting that 37 CFR 1.81(c) states "[W]henever the nature of the subject matter sought to be patented admits of illustration by drawing without its being necessary for the understanding of the subject matter and the applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.” Similarly, 35 USC 113 also sets forth “[W]hen the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof.” Thus, even the issue of whether or not the subject matter of the claims is “necessary for the understanding of the subject matter” aside, the Applicant’s assertions with respect to 35 USC 113 are not persuasive.
Additionally, with respect to 37 CFR 1.83, it is noted that 37 CFR 1.83(a) sets forth the following:
(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables and sequence listings that are included in the specification are, except for applications filed under 35 U.S.C. 371, not permitted to be included in the drawings.
In other words, if the subject matter of the claims is such that it is capable of being shown in a drawing, it must be shown, whether graphically/schematically or in a detailed illustration. Thus, Applicant’s assertions are not persuasive, and the objections to the drawings stand.
Applicant may wish to consider adding schematic drawings in the form of text boxes to show the claimed subject matter that is presently not shown, provided that such is done in a way that is supported by the specification as originally filed.
Regarding Applicant’s comments (on pages 8-9 of the 12/29/2025 reply) about the rejection of claim 1 (and thus the claims dependent therefrom) under 35 USC 112(b) and (a) for failing to disclosed the corresponding structure or material for performing the entire claimed function re the 35 USC 112(f)-invoking limitation “second positioning means for workpieces”, and failing to clearly link the structure, material, or acts to the function (and thus also failing to demonstrate that Applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention), Applicant has stated the following:
The rejection of claim 1 with regard to the "second positioning means for workpieces" is respectfully traversed. The Final Office Action states there is no disclosure of any particular structure, either explicitly or inherently, to perform the claimed function of "positioning" workpieces re the second workpiece table 12. Applicant respectfully disagrees for at least the following reasons.
Paragraph 0023 of the published specification discloses that the first preparation area 6 includes the first workpiece table 7 and the first positioning means 8. Paragraph 0024 of the published specification discloses that the second preparation area 11 includes the second workpiece table 12 and the second positioning means 13. As recognized in the Office Action, paragraph 0023 of the published specification and Figure 2 disclose that the first workpiece table 7 has magnetic holders 19, together with rear and side stops 20 for workpieces 9, which together form the first positioning means 8 (see FIG. 2). Paragraph 0024 of the published specification discloses that the second preparation area 7 is overall designed to be the same as the first preparation area 6. Paragraph 0029 of the published specification discloses "doubling of the preparation areas and the workpiece tables". In view of this disclosure, one of ordinary skill in the art would understand that the second workpiece table 12 and the second positioning means 13 of the second preparation area 11 could be designed the same as the first workpiece table 7 and the first positioning means 8 of the first preparation area 6. Thus, the second positioning means 13 could include the magnetic holders 19, together with rear and side stops 20 for workpieces 9, just like the first positioning means 8.
The disclosure of the specification which states "both workpiece tables 7, 12 can also be designed differently from one another" clearly relates to an alternative of the first embodiment wherein the workpiece tables 7, 12 are designed the same. In other words, the use of the word "can" indicates that the workpiece tables 7, 12 do not need to be different.
However, such is not persuasive.
In particular, Applicant points (pages 8-9 of the 12/29/2025 reply) to paragraphs 0023 and 0024 “of the published specification” and Figure 2 as providing support for the changes to the abstract and specification and Figure 2, and as providing support for the second positioning means (identified as element 13) being the same as the first positioning means 8 (which first positioning means was disclosed in the specification as originally filed as “magnetic holders 19, together with rear and side stops 20 for workpieces 9, which together form the first positioning means 8 (see Fig. 2)” (page 7 of the specification as filed in the paragraph published as paragraph 0023). However, it is noted that neither the paragraphs 0023 and 0024 (which paragraph numbers are with respect to the published version of the application, which is not the specification as originally filed), nor the paragraphs found at page 6, line 21 through page 7, line 14, of the specification as originally filed, nor the Figures of the application as filed, serve to teach that the second workpiece table 12 is “able to position the workpieces, for example with magnetic holders and stops”, as now set forth in the amended abstract, and as now similarly set forth in the specification amendments to “paragraph 0027 of the published version of the application”, nor is such inherent. While the specification as filed does teach that the first workpiece table 7 has magnetic holders 19, together with rear and side stops 20 for workpieces 9, which together form the first positioning means 8 (Figure 2) (page 7, lines 4-6, of the specification as originally filed), the specification as filed does not teach that the second workpiece table 12 is “able to position the workpieces, for example with magnetic holders and stops” nor that the second workpiece table 12 includes a second positioning means that is in the form of magnetic holders 19 and stops 20, nor is such inherent. Note also that the specification as filed (on at least page 7, lines 7-14 of the specification as originally filed, for example) expressly teaches that the workpiece tables 7, 12 “can also be designed differently from one another”.
Furthermore, it is noted that neither the paragraphs 0023 and 0024 (which paragraph numbers are with respect to the published version of the application, which is not the specification as originally filed), nor the paragraphs found at page 6, line 21 through page 7, line 14, of the specification as originally filed, nor the Figures of the application as filed, serve to teach the amendments to “paragraphs 0027 and 0028 of the published version of the application” and to Figure 2 to indicate that the table 7 in Figure 2 is also second table 12, and to indicate that the second table 12 includes positioning means 13 that are the magnetic holders 19 and stops 20, and (the amendments to paragraphs 0027 and 0028 of the published version of the application) to indicate that the workpiece table 12 is designed with a smooth surface in the direction of the workpieces 9, and to indicate that a not-shown bellows seal is located between the workpiece table 12 and its substructure with supports the drive, the toothed rack, and the pinion, to protect such from contamination. Furthermore, such is not inherent. Additionally note that the specification as filed (on at least page 7, lines 7-14 of the specification as originally filed, for example) expressly teaches that the workpiece tables 7, 12 “can also be designed differently from one another”.
Applicant’s assertion that simply because the specification as filed teaches that the “second preparation area 11…in overall terms is designed to be the same as the first preparation area 6” somehow means that different elements than the two preparation areas are identical, i.e., that the second workpiece table 12 or second positioning means 13 is/are identical to the first workpiece table 7 and first positioning means 8, is not persuasive. Note that an “area”/location/space is not the same as a table or positioning means, and a teaching that the second preparation area 11 is overall designed to be the same as the first preparation area 6 is not the same as a teaching that the first workpiece table 7 is designed to be the same as the second workpiece table 12, nor is it the same as a teaching that the first positioning means 8 is designed to be the same as the second positioning means 13. Furthermore, the designing of two preparation areas 6, 11, per se, “to be the same” does not mean that it is inherent that the first workpiece table 7 is designed to be the same as the second workpiece table 12, as opposed to merely the preparation “areas” 6, 11 being designed to be the same and the first 7 and second 12 workpiece tables being different. Furthermore, the designing of two preparation areas 6, 11, per se, “to be the same” does not mean that it is inherent that the first positioning means 8 is designed to be the same as the second positioning means 13, as opposed to merely the preparation “areas” 6, 11 being designed to be the same and the first 8 and second 13 positioning means being different/differently designed.
Applicant additionally points to “paragraph 0029 of the published specification” disclosing “doubling of the preparation areas and the workpiece tables” as support that “the second workpiece table 12 and the second positioning means 13 of the second preparation area could be designed the same as the first workpiece table 7 and the first positioning means 8 of the first preparation area 6”. However, such is likewise not persuasive. The teaching of “doubling of the preparation areas and the workpiece tables” appears to actually be found in paragraph 0008 of the published specification, which corresponds to the paragraph found on page 3, lines 3-14 of the specification as filed. It is noted that a teaching of doubling the preparation areas and workpiece tables (as compared to the related art described on pages 1-2 of the specification as filed in which there was only one preparation area and workpiece table) is not an express teaching that the two workpiece tables (nor that the two positioning means) are identical (nor is such inherent), as opposed to merely being a teaching that there are twice as many preparation areas and workpiece tables (i.e., two) as found in the related art. Applicant notes that this teaching means that the two positioning means “could” be designed to be the same. However, such is not persuasive as to the teaching expressly requiring (or inherently requiring) that the two tables or the two positioning means are the same/identical, as opposed to simply referring to the fact that there are two tables and two preparation areas, whether or not those two tables and preparation areas (and positioning means of the two tables) are identical. In other words, the teaching referred to by Applicant is not sufficient to establish that the two tables are identical and that the two tables have identical positioning means.
Applicant also goes on to indicate (page 9 of the 12/29/2025 reply) that the use of the term “can” in the disclosure in the teaching that “both workpiece tables 7, 12 can also be designed differently from one another” (in the paragraph found on page 7, lines 7-14 of the specification as originally filed) is indicative of “an alternative of the first embodiment wherein the workpiece tables 7, 12 are designed the same”. However, such is not persuasive. The paragraph in question in full (as filed 8/10/2022) reads:
On a second side 10 on the right-hand side near the workspace 2, a second preparation area 11 with a second workpiece table 12 is arranged, which carries second positioning means 13, and in overall terms is designed to be the same as the first preparation area 6. In accordance with the invention, however, both workpiece tables 7, 12 can also be designed differently from one another, in particular with regard to their length that can be used for workpieces, although two workpiece tables of the same length are preferred.
The simple fact that the paragraph chose to use the term “can” or “can also” does not, in and of itself, require that there is an embodiment in which the two tables 12, 7 are identical, nor that the two positioning means 8, 13 are identical, as opposed to merely indicating that with the embodiment in which the two preparation areas 6, 11 are designed to be the same, the (same) embodiment can also include the two workpiece tables being designed differently from each either. Note that there is no express teaching that there is an embodiment that the two tables 12, 7, are identical, nor that the nor the two positioning means 8, 13 are identical, nor is such inherent.
Thus, the new matter objections (under 35 USC 132) stand, as do the rejections under 35 USC 112(b) and 35 USC 112(a) re the claimed 35 USC 112(f)-invoking limitation “second positioning means for workpieces”.
Regarding the remainder of the previous rejections under 35 USC 112(b), Applicant indicates that the claims have been amended to address the concerns. However, attention is directed to the above rejections of claim 6 under 35 USC 112(b) for any issues with respect thereto that either remain, or that were newly created via the amendment filed 12/29/2025.
Regarding the prior art rejections based on U.S. Patent Application Publication No. 2019/0009380 to Sugiyama (hereinafter, “Sugiyama”), Applicant has stated the following (on page 11 of the 12/29/2025 reply):
None of the references cited disclose a machine for the milling or grinding of toothed racks having the components and features recited in claim 1.
Applicant points out that claim 1 was previously amended to recite that ‘each of the first and second workpiece table has two drives that operate in opposite directions or operate at an angle which is the same’, and this feature is not suggested by the references cited. In particular, Sugiyama does not give any hint regarding how the drives are operated. Even if the drives disclosed by Sugiyama could theoretically operate in the manner claimed, the Examiner's reliance on Sugiyama, which does not suggest this operation, to reject claim 1 would be considered impermissible hindsight based on the Applicant's disclosure.
As a side note, it is noted that claim 1 as presented 12/29/2025 recites “wherein each of the first and second workpiece table has two drives that operate in opposite directions or operate at an angle which is the same. Noting the use of the term “or”, it is only necessary for one of the alternatives to be met in order for the claim language to be met.
That said, it is noted that Sugiyama teaches the argued limitation. In particular, as discussed in the above rejection of claim 1 under 35 USC 102(a)(1) as being anticipated by Sugiyama (with particular emphasis on the italicized portions below):
Sugiyama teaches…wherein each of the first and second workpiece table has two drives that operate in opposite directions or operate at an angle which is the same (and it is noted that it is only necessary to meet one of the alternatives in order to meet the claim language).
Considering the table 5 in Figure 12 that is labeled as “A” to be the “first” workpiece table and the two linked tables 5, 5 (labeled as “B” and “C” in Figure 12) to be the “second” workpiece table (see Figure 12, as well as at least paragraphs 0043 and 0074-0078, for example), with the “area” to the left of 2 in Figure 12 being the “first” preparation area, and the “area” to the right of 2 in Figure 12 being the “second” preparation area, it is noted that each of the tables 5 (re A and re the tables 5 of B and C re the table B+C) has its own drive/feed motor 15 (paragraph 0051, paragraph 0080, for example) such that the workpiece table B+C, for example, has two drives (15, 15) that “operate in” (i.e., are able to be operated in) opposite directions or operate “at an angle which is the same”, as broadly claimed. For example, it is noted that the motors/drives 15 are capable of causing the movement of the tables in both the left and right directions along the X axis, and thus, the motors/drives 15, 15 of the table B+C are capable of operating “in opposite directions”, in that both motors 15, 15 of the table B+C are capable of being driven in a direction so as to cause movement towards the left re Figure 12, and both motors 15, 15 of the table B+C are capable of being driven in a direction so as to cause movement towards the right re Figure 12. Alternatively/additionally, it is noted that the motor 15 of the table 5 labeled as B of the overall table B+C is located at an opposite end/half/side (i.e., the left side of B+C re Figure 12) of the table B+C from the end/half/side of B+C where the motor 15 of the table 5 labeled as C of the overall table B+C is located (i.e., the right end of B+C re Figure 12). See Figures 12 and 4, as well as at least paragraphs 0051 and 0080, for example. Alternatively, it is noted that the two drive motors 15, 15 of the overall table B+C of Figure 12 can be considered to be able to operate “at an angle which is the same”, as broadly claimed, so as to drive their respective output shafts 33 and pinions 14 at the same time so as to cause the table B+C to move in X. See Figures 4, 6-7, 12, and paragraphs 0049-0054, 0068, 0078-0081, for example. Additionally, attention is directed to paragraph 0128, which teaches that plural feed devices, each including a feed motor and a pinion gear, can be attached to both the left and right ends of each table 5 (and thus also plural feed devices provided to table A), such as a high-speed feed motor being attached to one side of the table, and a feed motor for high torque being attached to the other size of the table. Such feed motors are also considered to be capable of operation “in opposite directions”, as broadly claimed, and/or “at an angle which is the same”, as broadly claimed. For example, it is noted that the motors/drives for each of the tables (including the table 5 that is labeled as “A” in Fig. 12) are capable of causing the movement of the table in both the left and right directions along the X axis, and thus, the motors/drives (taught by at least paragraph 0128) of the table A are capable of operating “in opposite directions”, in that both motors of the table A are capable of being driven in a direction so as to cause movement towards the left re Figure 12, and both motors of the table A are capable of being driven in a direction so as to cause movement towards the right re Figure 12. See at least Figure 12, Figure 4, paragraphs 0051, 0080, and 0128, for example. Alternatively, it is noted that the two drive motors of the table A of Figure 12 can be considered to be able to operate “at an angle which is the same”, as broadly claimed, so as to drive their respective output shafts 33 and pinions 14 at the same time so as to cause the table A to move in X. See Figures 4, 6-7, 12, and paragraphs 0049-0054, 0068, 0078-0081, and 0128, for example.
Furthermore, regarding Applicant’s specific assertion (page 11 of the 12/29/2025) that to reject claim 1 based on Sugiyama (U.S. Patent Application Publication No. 2019/0009380) is “considered impermissible hindsight based on Applicant’s disclosure”, such is unclear, noting that the rejection of claim 1 in question is based on 35 USC 102(a)(1), i.e., is an anticipation rejection under 35 USC 102(a)(1) rather than being an obviousness rejection under 35 USC 103. Thus, there is no modification of Sugiyama being made such that there is no motivation or combination being made in the rejection for Applicant to allege that hindsight (i.e., for the modification/motivation/combination/etc.) was used to make any such modification (i.e., since no modification of the reference was made in the rejection).
Applicant indicates (on page 11 of the 12/29/2025 reply) that “[T]he remaining claims depend on claim 1 and thus are allowable for at least the same reasons” and “[A]ccordingly, withdrawal of the rejections under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 is respectfully requested”. However, attention is directed to the above responses to Applicant’s argument(s), which responses likewise apply to the dependent claims.
Conclusion
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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
eec
January 8, 2026