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 .
Election/Restrictions
Applicant’s election without traverse of Group I, drawn to a “method for machining or producing a toothing in a workpiece by means of a tool toothing” in the reply filed on April 13, 2026, is acknowledged.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 13, 2026.
Specification
The disclosure is objected to because of the following informalities:
the first word of the first sentence of the abstract is not capitalized.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
the “additional discontinuous surface, which differs from the tooth foot regions of the workpiece toothing and serves as a grippable and/or as a positioning determination surface and which is substantially annular in section orthogonal to the workpiece rotation axis, is produced with the tooth tip regions of the tool toothing by removing material by cutting on the workpiece clamped in the same clamped setup”, as set forth in claim 12.
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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 and 15-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, lines 1-2, the claim sets forth “[A] method for machining or producing a toothing (2) in a workpiece by means of a tool toothing”. However, it is unclear as set forth in the claim as to whether the limitation “a toothing (2) in a workpiece by means of a tool toothing” is intended to go only with “producing”, or whether “a toothing (2) in a workpiece by means of a tool toothing” is intended to also go with “machining”. The same situation exists in claim 12, lines 1-2.
In claim 1, lines 1-4, the claim recites “[A] method for machining or producing a toothing (2) in a workpiece by means of tool toothing, in which the tool toothing is brought into a first machining engagement with the rotating workpiece toothing clamped in a clamped setup”. However, it is unclear as set forth in the claim to what “which” is intended to refer, e.g., the “method for machining”, the “method…for producing a toothing in a workpiece by means of tool toothing”, etc. The same situation exists in claim 12, lines 1-2.
There are several positively recited limitations that lack sufficient antecedent bases in the claims. Examples of this are:
“the rotating workpiece toothing clamped in a clamped setup” in claim 1, lines 3-4 (noting that no workpiece toothing that is “rotating” was previously recited at all, much less any rotating workpiece toothing that is “clamped in a clamped setup”);
“the tooth spaces of the workpiece toothing” in claim 1, lines 4-5;
“the workpiece toothing” in claim 1, line 5 (noting that it is unclear as claimed whether such refers to the “toothing (2) in a workpiece” that was previously set forth in claim 1, lines 1-2, or whether such is instead intended to refer to “the rotating workpiece toothing” set forth in claim 1, line 3, which might be intended to refer to a different workpiece toothing than that set forth in lines 1-2 of claim 1);
“the pitch” in claim 1, line 8;
“such assignment” in claim 1, lines 8-9;
“the workpiece toothing clamped in the same clamped setup…” in claim 1, lines 10-11;
“the deepest advancement of the first machining engagement” in claim 1, last two lines;
“the tooth tips of the workpiece toothing” in claim 2, line 2;
“the tooth tips of the tool toothing” in claim 2, line 3;
“the workpiece toothing” in claim 2, line 2 (noting that it is unclear whether such is intended to refer to the “toothing (2) in a workpiece” of claim 1, lines 1-2, the “rotating workpiece toothing” of claim 1, line 3, or the “workpiece toothing clamped in the same clamped setup of the first machining engagement” of claim 1, lines 10-11);
“the tooth tip diameter of the workpiece toothing” in claim 4;
“the deviation in the tip diameter” in claim 5;
“the tip diameter of the workpiece toothing” in claim 5;
“its mean value” in claim 5;
“the main motion component of which” in claim 6;
“the workpiece rotation axis” in claim 6;
“the phase shift” in claim 11 (noting that while claim 1 previously recited “the tool toothing is brought into a second machining engagement phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first engagement”, such is not the same as previously reciting a “phase shift”, per se, and it is unclear as claimed in claim 11 exactly what element/elements/structure/actions are intended to be referenced via the recitation of “the phase shift”);
“the rotating workpiece toothing clamped in a clamped setup” in claim 12, lines 3-4 (noting that plural workpieces were previously recited);
“its teeth” in claim 12, line 4;
“the tooth spaces of the workpiece toothing” in claim 12, lines 4-5 (noting that plural different workpiece toothings were previously recited);
“the workpiece toothing” in claim 12, line 5 (noting that it is unclear as claimed whether such refers to the “toothing (2) in a workpiece” that was previously set forth in claim 1, lines 1-2, the “toothing in a workpiece” that was previously set forth in claim 12, lines 1-2, whether such is instead intended to refer to “the rotating workpiece toothing” set forth in claim 1, line 3, which might be intended to refer to a different workpiece toothing than that set forth in lines 1-2 of claim 1, or whether such is instead intended to refer to “the workpiece toothing rotating” set forth in claim 12, line 3, which might be intended to refer to a different workpiece toothing than that set forth in lines 1-2 of claim 12);
“the tooth foot regions” in claim 12, line 6;
“the workpiece toothing” in claim 12, line 6 (plural different workpiece toothing recitations previously recited that are not clearly set forth as being the same workpiece toothing);
“the workpiece rotation axis” in claim 12, line 8;
“the tooth tip regions of the tool toothing” in claim 12, lines 8-9;
“the tool toothing” in claim 12, line 9 (noting the plural different “tool toothings” that were previously recited, specifically, in claim 1, line 2, and in claim 12, line 2, for example);
“the workpiece clamped in the same clamped setup” in claim 12, line 9 (noting that plural workpieces were previously recited, particularly in claim 1, lines 1-2, and in claim 12, lines 1-2, for example, and also no workpiece(s) that was expressly recited as “clamped” in a setup or the like was expressly recited); and
“the machining distance of deepest advancement” in claim 15.
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.
Throughout the claims (including express recitations in claims 1 and 15), there is no clear frame of reference provided in the claim for determining what is meant by “pitch”, i.e., what specific dimension/measurement.
In claim 1, lines 4-5, the claim sets forth “such that there is a gear coupling which assigns tool teeth (4) to the tooth spaces of the workpiece toothing”. Firstly, it is unclear as claimed whether “a gear coupling” is intended to refer to a structure, or whether “a gear coupling” is instead intended to refer to an action. Furthermore, regardless of whether the term “gear coupling” is intended to refer to a tangible structure or to an action, it is unclear how or in what regard a “gear coupling” (either structure or action) is to be considered to perform the function of “assigning” re the limitation “which assigns tool teeth (4) to the tooth spaces of the workpiece toothing”.
In at least claim 1, line 4, it is unclear as set forth in the claim as to whether “tool teeth (4)” is intended to be the same as (or possibly a subset of), or is instead intended to be different from/additional to, the previously-recited “tool toothing” set forth in claim 1, line 2.
In claim 1, line 6, it is unclear as claimed what is being set forth as “characterized in that…”, e.g., the assignment of tool teeth to “the” tooth spaces of the workpiece toothing, the gear coupling, the method for machining, the method for producing a toothing in a workpiece, etc.
In claim 1, lines 7-9, the claim sets forth “the tool toothing is brought into a second machining engagement phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement”. However, it is unclear as set forth in the claim with what the tool toothing is brought into a “second machining engagement”, e.g., the workpiece, the workpiece toothing, the tooth spaces of the workpiece toothing, etc. In other words, the tool toothing is brought into a second machining engagement of the tool toothing with what?
In claim 1, lines 7-9, the claim sets forth “the tool toothing is brought into a second machining engagement phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement”. Firstly, it is unclear as claimed whether “the gear coupling” is intended to refer to a structure, or whether “the gear coupling” is instead intended to refer to an action. Furthermore, regardless of whether the term “gear coupling” is intended to refer to a tangible structure or to an action, as noted previously re lines 4-5 of claim 1, it is unclear how or in what regard a “gear coupling” (either structure or action) is to be considered to perform the function of “assigning” re the limitation “which assigns tool teeth (4) to the tooth spaces of the workpiece toothing”, and it is further unclear in lines 7-9 how or in what regard the claimed “second machining engagement” phase-shift is to be compared to “the” gear coupling (of line 4), or to be compared to some form of action of “assignment” of “the” gear coupling, as set forth in claim 1. It is further unclear as to what “such assignment of the gear coupling of the first machining engagement” is intended to refer in lines 8-9 of claim 1.
In claim 1, lines 9-12, the claim sets forth “said second machining engagement having increased machining distance from the workpiece toothing clamped in the same clamped setup of the first machining engagement in comparison with the deepest advancement of the first machining engagement”. However, it is unclear as set forth in the claim how or in what regard a “machining engagement”, per se, as opposed to some portion of the tool, can be considered to have an “increased machining distance” from the workpiece toothing. Furthermore, noting that (as best understood) it would appear that the tool toothing/teeth is/are in contact with the workpiece toothing during both the “first engagement” and the “second engagement”, it is further unclear how or in what regard the second machining engagement, per se, can be considered to have “an increased machining distance from the workpiece toothing”. In other words, even if the claim were amended to indicate that the tool toothing or tool teeth (as opposed to the “second machining engagement”) have (during a second machining engagement of the tool toothing or tool teeth with the workpiece toothing) an increased distance from the workpiece toothing as compared to a position of the tool teeth/toothing during “the deepest advancement” of the tool/tool toothing/tool teeth relative to the workpiece during the “first machining engagement” of the tool/tool toothing/tool teeth with the workpiece, it is noted that it would still be unclear how or in what regard such distance between the tool and workpiece is to be considered to be “increased”, given that the tool and workpiece are in contact with one another (i.e., the workpiece and tool are zero distance apart) in both the first and second machining engagements.
In claim 1, the claim sets forth “said second machining engagement having increased machining distance from the workpiece toothing clamped in the same clamped setup of the first machining engagement in comparison with the deepest advancement of the first machining engagement”. However, it is unclear as set forth in the claim how or in what regard a “first machining engagement” is to be considered to, per se, have a “deepest advancement” (as opposed to there being a deepest advancement of a tool toothing relative to some unspecified-in-the-claim frame of reference or portion of the workpiece or the like).
In claim 2, the claim recites “the second machining engagement causes the tooth tips of the workpiece toothing to be machined by the tooth tips of the tool toothing”. However, it is unclear as set forth in the claim how or in what regard an “engagement”, per se, is to be considered to “cause” any machining.
Claim 3 sets forth “[T]he method according to claim 1 in which a machining region of the second machining engagement covers different phase shifts”. However, firstly, it is unclear as claimed how or in what regard the claimed “second machining engagement”, per se, is to be considered to have a “machining region”, noting that it is unclear as set forth in the claim how or in what regard the engaging (for example) of a tool toothing with a workpiece/workpiece toothing, per se, has a “machining region” (absent more verbiage). Furthermore, it is unclear as set forth in the claim how or in what regard the claimed “second machining engagement”, per se, is to be considered to “cover different phase shifts”, i.e., it is unclear how or in what regard the engagement of (for example) a tool toothing with a workpiece or workpiece toothing, per se, is to be considered to “cover different phase shifts”.
In claim 4, the claim recites “the tooth tip diameter of the workpiece toothing is determined by contact lines of the second machining engagement”. However, it is unclear as set forth in the claim how or in what regard a “second machining engagement”, per se, is to be considered to have “contact lines”. Note that the claim does not refer to lines at which any tool toothing or tool tips or the like contact tips of the workpiece toothing (or anything of the kind), but rather, refers to “contact lines” that are “of the second machining engagement”, per se.
In claim 5, the claim recites “the deviation in the tip diameter of the workpiece toothing from its mean value taken over a workpiece tooth is less than 200 μm”. However, it is unclear as claimed to what “its” is intended to refer. Additionally, the intended relationship (if any) of the claimed “workpiece tooth” to the various workpiece “toothing(s)” is unclear as claimed.
In claim 6, the claim recites “[T]he method according to claim 1 comprising a feed motion of the second machining engagement, the main motion component of which is directed along the workpiece rotation axis”. However, it is unclear how or in what regard a “second machining engagement” (e.g., of a tool toothing with something unspecified in the claim, or of a tool toothing with a workpiece toothing, etc.), per se, is to be considered to have “a feed motion”, as set forth in the claim.
In claim 7, the claim sets forth “[T]he method according to claim 1 comprising a continuous phase shift in the second machining engagement”. However, it is unclear as claimed what the continuous phase shift is a phase shift of (and relative to what such is phase “shifted”), i.e., a phase shift of what relative to what else? Additionally, the intended relationship (if any) of the claimed “continuous phase shift” to the “phase-shifted” second machining engagement of the tool toothing (by at least one fourth of “the” pitch), as previously set forth in claim 1, is unclear, such that it is unclear as claimed whether the “continuous phase shift” is intended to somehow further limit the aforementioned limitation of claim 1, or is instead intended to refer to some entirely different phase shift. It is also unclear as claimed how or in what regard a phase shift, per se, can be considered to be “continuous”. Similar issues also exist regarding claim 16, which also references the claimed “continuous phase shift”.
In claim 7, the claim sets forth “[T]he method according to claim 1 comprising a continuous phase shift in the second machining engagement”. However, the term “continuous” in claim 7 is a relative term which renders the claim indefinite. The term “continuous” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as claimed how “continuous” a given phase shift must be in order to be continuous, and how discontinuous a given phase shift must be in order to be excluded by the term. It is unclear as claimed what quality/qualities a given phase shift must have (or lack) to be considered to be “continuous”, and what quality/qualities a given phase shift must have (or lack) to be excluded by the term. Similar issues also exist re claim 16.
In claim 7, the claim sets forth “[T]he method according to claim 1 comprising a continuous phase shift in the second machining engagement”. However, it is unclear as claimed how or in what regard a given second machining engagement, per se, is to be considered to comprise a “continuous phase shift”. Similar issues also exist regarding claim 16.
In claim 16, the claim sets forth “[T]he method according to claim 7 wherein the continuous phase shift in the second machining engagement comprises an oscillating phase shift”. However, claim 16 depends from claim 7, which previously set forth “a continuous phase shift in the second machining engagement”. It is unclear as set forth in claim 16 how the claimed phase shift can be considered to be “continuous”, and also be considered to be “oscillating”. It is also unclear
In claim 8, the claim sets forth “[T]he method according to claim 16, in which the ratio of oscillation frequency of phase shift to workpiece speed is given by (2k+1)/(2m), wherein m is greater than 2 and less than 10, and k is greater than or equal to 0 and less than 10”. However, it is unclear as claimed what the “phase shift” recited in claim 8 is a phase shift of, i.e., oscillation frequency of a shift of a phase of what relative to what? It is also unclear as claimed what is meant by “workpiece speed”, i.e., rotation speed, translation speed, etc. (Care should be taken to avoid the addition of new matter.)
In claim 9, the claim sets forth “the first machining engagement is a machining engagement of gear skiving or hard skiving”. However, the term “hard” in claim 9 is a relative term which renders the claim indefinite. The term “hard” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as claimed how hard the “skiving” must be (or what other characteristic(s) a given skiving operation must have or lack) in order to be considered “hard skiving”, vs. how un-hard a given skiving operation must be (or what other characteristic(s) a given skiving operation must have or lack) in order to be excluded by the term “hard skiving”. (Note that the claim does not mention “skiving of a workpiece that has been hardened”, but rather mentions “hard skiving”.)
In claim 10, “the tool toothing is a skiving wheel ground by step grinding”. However, it is unclear as set forth in the claim how or in what regard “toothing”, per se, “is” a wheel, as opposed to the wheel including the tool toothing.
In claim 11, the claim sets forth “the phase shift is produced by means of an additional rotation of workpiece and/or tool toothing”. However, there is no clear frame of reference(s) provided in the claim for determining what is meant by “additional”, i.e., “additional” as compared to what location, position, orientation, angular frame of reference, prior actions, etc., or as compared to what point in time?
In claim 11, the claim sets forth “the phase shift is produced by means of an additional rotation of workpiece and/or tool toothing”. However, firstly, it is unclear as set forth in the claim whether “workpiece and/or tool toothing” is intended to refer to –workpiece toothing and/or tool toothing--. Additionally, it is unclear as set forth in the claim whether “workpiece and/or tool toothing” is intended to refer to any of the tool toothing or workpiece or workpiece toothing(s) previously set forth in claim 1, or whether such is instead intended to refer to additional tool toothing(s), workpiece toothing(s), or workpiece(s).
In claim 12, the claim sets forth “[A] method for machining or producing a toothing in a workpiece by means of tool toothing, in which the tool toothing is brought into a first machining engagement with the workpiece toothing rotating in a clamped setup under a gear coupling which assigns its teeth to the tooth spaces of the workpiece toothing according to the method of claim 1, in which…”. That said, noting the reference back to “the method of claim 1”, it is unclear as claimed whether all of the limitations prior to the language “the method of claim 1” are intended to refer to the same toothing in a workpiece, tool toothing, first machining engagement, workpiece toothing, clamped setup, gear coupling, tooth spaces, etc., of claim 1, or whether such are all instead intended to refer to additional such elements (i.e., additional to the ones previously recited in claim 1).
In claim 12, the claim recites “an additional discontinuous surface”. However, it is unclear as set forth in the claim with respect to what the “additional discontinuous surface” is “additional” (i.e., additional relative to what?), and it is further unclear as set forth in the claim with respect to (or compared to) what the “additional discontinuous surface” is discontinuous” (i.e., discontinuous with what?).
In claim 12, the claim recites “serves as a grippable and/or as a positioning determination surface”. However, it is unclear as claimed whether this limitation is missing some verbiage re the term “grippable”, i.e., serves as a grippable what? Alternatively, in the event that “grippable” is intended to go with some of the verbiage “determination surface”, it is unclear as claimed whether “grippable” is intended to go only with “surface”, or whether “grippable” is instead intended to go with “determination surface”.
The term “substantially annular” in claim 12 is a relative term which renders the claim indefinite. The term “substantially annular” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, it is unclear as set forth in the claim how close to “annular” a given “additional discontinuous surface” must be (or what characteristics such a surface must have or lack) in order to be considered to be “substantially” annular, vs. how far away from “annular” a given “additional discontinuous surface” must be (or what characteristics such a surface must have or lack) in order to be considered to be excluded by the term “substantially” annular.
In claim 12, the claim sets forth “A method for machining or producing a toothing in a workpiece by means of tool toothing, in which the tool toothing is brought into a first machining engagement with the workpiece toothing rotating in a clamped setup under a gear coupling which assigns its teeth to the tooth spaces of the workpiece toothing according to the method of claim 1, in which an additional discontinuous surface, which differs from the tooth foot regions of the workpiece toothing and serves as a grippable and/or as a positioning determination surface and which is substantially annular in section orthogonal to the workpiece rotation axis, is produced with the tooth tip regions of the tool toothing by removing material by cutting on the workpiece clamped in the same clamped setup.
In claim 12, the claim sets forth “removing material by cutting on the workpiece clamped in the same clamped setup”. However, it is unclear as claimed as to what “the same clamped setup” is intended to refer, i.e., the “same clamped setup” as what element, or the “same clamped setup” as during what action(s), or the “same clamped setup” as was used for what during what point(s) in time, etc., i.e., the same as what?
In claim 15, the claim sets forth “[T]he method according to claim 1 wherein the second machining engagement is phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement at the machining distance of deepest advancement”. However, it is unclear as set forth in the claim what is being set forth as being or occurring “at the machining distance of deepest advancement”.
In claim 15, the claim sets forth “[T]he method according to claim 1 wherein the second machining engagement is phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement at the machining distance of deepest advancement”. However, it is unclear as set forth in the claim how or in what regard “the second machining engagement”, per se, is to be considered to be “phase-shifted by at least one fourth of the pitch…” (as opposed to a position of the tool toothing, for example). Furthermore, noting that claim 1 previously recited “the tool toothing is brought into a second machining engagement phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement”, it is unclear whether the limitation “wherein the second machining engagement is phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement” set forth in claim 15 further limits claim 1.
In claim 15, in the limitation “at the machining distance of deepest advancement”, it is unclear as claimed what constitutes the claimed “machining distance”, i.e., a distance between what and what else, and it is unclear what effect the term “machining” is intended to have on the limitation “distance”. Furthermore, regarding the language “of deepest advancement”, it is unclear as claimed what such is intended to reference, i.e., deepest advancement of what relative to what else?
In claim 15, lines 1-3, the claim sets forth “wherein the second machining engagement is phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement”. Firstly, it is unclear as claimed whether “the gear coupling” is intended to refer to a structure, or whether “the gear coupling” is instead intended to refer to an action. Furthermore, regardless of whether the term “gear coupling” is intended to refer to a tangible structure or to an action, as noted previously re lines 4-5 of claim 1, it is unclear how or in what regard a “gear coupling” (either structure or action) is to be considered to perform the function of “assigning” re the limitation “which assigns tool teeth (4) to the tooth spaces of the workpiece toothing”, and it is further unclear in claim 15 how or in what regard the claimed “second machining engagement” phase-shift is to be compared to “the” gear coupling (of claim 1), or to be compared to some form of action of “assignment” of “the” gear coupling, as set forth in claim 1. It is further unclear as to what “such assignment of the gear coupling of the first machining engagement” is intended to refer in claim 15, i.e., it is unclear as claimed what such is intended to mean.
The following is a quotation of the first paragraph 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.
Claims 1-12 and 15-17 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.
In claim 1, lines 9-12, the claim sets forth “said second machining engagement having increased machining distance from the workpiece toothing clamped in the same clamped setup of the first machining engagement in comparison with the deepest advancement of the first machining engagement”. However, the specification does not appear to describe such in a manner so as to convey to one skilled in the art that the inventor(s) had possession of such. As set forth in a separate rejection of claim 1 under 35 USC 112(b) hereinabove, it is noted that it is unclear as set forth in the claim how or in what regard a “machining engagement”, per se, as opposed to some portion of the tool, can be considered to have an “increased machining distance” from the workpiece toothing. Furthermore, noting that (as best understood) it would appear that the tool toothing/teeth is/are in contact with the workpiece toothing during both the “first engagement” and the “second engagement”, it is further unclear how or in what regard the second machining engagement, per se, can be considered to have “an increased machining distance from the workpiece toothing”, and the specification as filed does not appear to clearly teach such. Note that even if the claim were amended to indicate that the tool toothing or tool teeth (as opposed to the “second machining engagement”) have (during a second machining engagement of the tool toothing or tool teeth with the workpiece toothing) an increased distance from the workpiece toothing as compared to a position of the tool teeth/toothing during “the deepest advancement” of the tool/tool toothing/tool teeth relative to the workpiece during the “first machining engagement” of the tool/tool toothing/tool teeth with the workpiece, it is noted that it would still be unclear how or in what regard such distance between the tool and workpiece is to be considered to be “increased” (re the second machining engagement as compared to the first machining engagement), given that the tool and workpiece are in contact with one another (i.e., the workpiece and tool are zero distance apart) in both the first and second machining engagements.
Claim 3 sets forth “[T]he method according to claim 1 in which a machining region of the second machining engagement covers different phase shifts”. However, firstly, it is unclear as claimed how or in what regard the claimed “second machining engagement”, per se, is to be considered to have a “machining region”, noting that it is unclear as set forth in the claim how or in what regard the engaging (for example) of a tool toothing with a workpiece/workpiece toothing, per se, has a “machining region” (absent more verbiage). Furthermore, it is unclear as set forth in the claim how or in what regard the claimed “second machining engagement”, per se, is to be considered to “cover different phase shifts”, i.e., it is unclear how or in what regard the engagement of (for example) a tool toothing with a workpiece or workpiece toothing, per se, is to be considered to “cover different phase shifts”. The specification as filed does not teach such in a manner so as to demonstrate possession thereof. While paragraph 0007 of the specification as filed teaches “[I]n this connection, it is provided that a machining region of the second machining engagement covers different phase shifts”, it is noted that such teaching does not provide an indication of what exactly this means or how such is achieved or what steps this actually involves.
In claim 5, the claim recites “the deviation in the tip diameter of the workpiece toothing from its mean value taken over a workpiece tooth is less than 200 μm”. However, it is unclear as claimed to what “its” is intended to refer. Additionally, it is unclear as claimed and disclosed how this “mean value” is measured/determined/calculated and it is unclear as claimed and disclosed what this mean value is intended to reference. It is noted that paragraph 0029 instead references a deviation “from the shown envisioned target tooth tip surface”, rather than deviation from a “mean value”. It is unclear whether the deviation re claim 5 is intended to be a deviation from an ideal/design/intended shape/measurement. It is unclear whether the deviation re claim 5 is instead intended to be deviation from some sort of calculation of the mean actual (rather than ideal/design/intended) measurements of the diameter along, say, the circumferential direction of the tooth/toothing.
In claim 7, the claim sets forth “[T]he method according to claim 1 comprising a continuous phase shift in the second machining engagement”. However, it is unclear as claimed what the continuous phase shift is a phase shift of (and relative to what such is phase “shifted”), i.e., a phase shift of what relative to what else? Additionally, the intended relationship (if any) of the claimed “continuous phase shift” to the “phase-shifted” second machining engagement of the tool toothing (by at least one fourth of “the” pitch), as previously set forth in claim 1, is unclear, such that it is unclear as claimed whether the “continuous phase shift” is intended to somehow further limit the aforementioned limitation of claim 1, or is instead intended to refer to some entirely different phase shift. It is also unclear as claimed how or in what regard a phase shift, per se, can be considered to be “continuous”. Similar issues also exist regarding claim 16, which also references the claimed “continuous phase shift”, and in claims 8 and 17 (noting the dependency thereof). That said, it does not appear that the specification clearly teaches how or in what regard any phase shift, per se, is to be “continuous”, as in it does not appear that the specification clearly teaches what such means or what step(s) such entails.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 7-8, 10 and 15-17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
In particular, it is noted that claim 3 sets forth “[T]he method according to claim 1 in which a machining region of the second machining engagement covers different phase shifts”. That said, it is noted that claim 1 previously set forth that “the tool toothing is brought into a second machining engagement phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement”. It appears that the limitation in claim 3 re a machining region of the second machining engagement covering “different phase shifts” may be redefining the limitation from claim 1 re “the tool toothing is brought into a second machining engagement phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement”, rather than further limiting claim 1.
In claim 7, the claim sets forth “[T]he method according to claim 1 comprising a continuous phase shift in the second machining engagement”. However, it is unclear as claimed what the continuous phase shift is a phase shift of (and relative to what such is phase “shifted”), i.e., a phase shift of what relative to what else? Additionally, the intended relationship (if any) of the claimed “continuous phase shift” to the “phase-shifted” second machining engagement of the tool toothing (by at least one fourth of “the” pitch), as previously set forth in claim 1, is unclear, such that it is unclear as claimed whether the “continuous phase shift” is intended to somehow further limit the aforementioned limitation of claim 1, or is instead intended to refer to some entirely different phase shift. In the event that claim 7 is redefining the aforementioned phase-shift limitation of claim 1, then claim 7 fails to include all of the limitations of claim 1. The same issues likewise apply re claims 16, 8, and 17, noting the dependencies thereof.
Furthermore, re claim 16, it is noted that claim 16 depends from claim 7, and recites “wherein the continuous phase shift in the second machining engagement comprises an oscillating phase shift”. However, it appears that such further does not limit claim 7, noting that it does not appear that a phase shift that is “oscillating” is “continuous”.
In claim 10, “the tool toothing is a skiving wheel ground by step grinding”. However, it is unclear as set forth in the claim how or in what regard “toothing”, per se, “is” a wheel, as opposed to the wheel including the tool toothing. That said, noting that it appears that claim 10 in its present form is redefining the tool “toothing” of claim 1 as being a “wheel” (rather than being toothing, or toothing that is part of a wheel), then it is noted that claim 10 does not appear to require all of the limitations of claim 1.
In claim 15, the claim sets forth “[T]he method according to claim 1 wherein the second machining engagement is phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement at the machining distance of deepest advancement”. However, it is unclear as set forth in the claim how or in what regard “the second machining engagement”, per se, is to be considered to be “phase-shifted by at least one fourth of the pitch…” (as opposed to a position of the tool toothing, for example). Furthermore, noting that claim 1 previously recited “the tool toothing is brought into a second machining engagement phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement”, it is unclear whether the limitation “wherein the second machining engagement is phase-shifted by at least one fourth of the pitch in comparison with such assignment of the gear coupling of the first machining engagement” set forth in claim 15 further limits claim 1.
Comment Regarding Non-Indication of Allowable Subject Matter
A thorough search has been conducted re the elected invention/claims. That being said, though no art rejections are considered to presently apply to claims 1-12 and 15-17, no indication regarding the allowability of the subject matter of elected claims 1-12 and 15-17 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 USC 112(a) and 35 USC 112(d), set forth above, particularly given that is unclear what changes to the claims might be necessary to overcome the above-described issues with respect to 35 USC 112(a) and (d).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
eec
June 11, 2026
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