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 (claim(s) 1, drawn to “A tool transport system”) in the reply filed on 3/13/2026 is acknowledged.
Claims 2-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 3/13/2026.
Drawings
The drawings are objected to because there are two figures labeled, “Figure 19”, and because the second “Figure 19” contains text boxes (see boxes (204)-(208) and (222)) that aren’t in the English language. 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a common holding mechanism capable of holding any of a plurality of tool holders” in claim 1;
“a common connection mechanism that is connectable to the common holding mechanism” in claim 1;
“a first attachment mechanism to which a first tool…is attachable” in claim 1; and
“a second attachment mechanism to which a second tool…is attachable” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities: On line 9 of the claim, a “:” should be inserted after “having”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 14 of the claim, “and” should be inserted after “a first tool standard”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 15 of the claim, a “:” should be inserted after “having”. Appropriate correction is required.
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.
Claim 1 is 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.
Lines 9-14 of claim 1 state, “a first tool holder of the plurality of tool holders having…a first attachment mechanism to which a first tool to be used in a first machine tool of the plurality of machine tools is attachable, the first tool conforming to a first tool standard.” This limitation is viewed to be vague and indefinite, because as claimed and as formatted in the pending claim set filed on 3/13/2026, it is unclear if Applicant is setting forth that the “first tool holder” further has/includes the “first tool conforming to a first tool standard” or if instead Applicant is setting forth that the “first attachment mechanism” is configured, for example, to have a first tool conforming to a first tool standard attached thereto. In other words, it is unclear if Applicant is positively reciting the “first tool” or not.
Lines 15-20 of claim 1 state, “a second tool holder of the plurality of tool holders having…a second attachment mechanism to which a second tool to be used in a second machine tool of the plurality of machine tools is attachable, the second tool conforming to a second tool standard different from the first tool standard.” This limitation is viewed to be vague and indefinite, because as claimed and as formatted in the pending claim set filed on 3/13/2026, it is unclear if Applicant is setting forth that the “second tool holder” further has/includes the “second tool conforming to a second tool standard different from the first tool standard” or if instead Applicant is setting forth that the “second attachment mechanism” is configured, for example, to have a second tool conforming to a second tool standard attached thereto. In other words, it is unclear if Applicant is positively reciting the “second tool” or not.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2823933 B1 (hereinafter EP '933) and EP 2918373 B1 (hereinafter EP '373).
Please be advised that EP '933 and EP '373 were each previously cited by Examiner on the PTO-892 that mailed on 1/13/2026. Please also be advised that an EPO Machine Translation of each of EP '933 and EP '373 is relied upon below. These translations were furnished on 1/13/2026.
Claim 1: Figure 5 of EP '933 shows therein a tool transport system comprising a plurality of machine tools (2, 29), and a tool storage portion (1) having a plurality of holding parts (8, 9).
Next, please be advised that “a common holding mechanism capable of holding any of a plurality of tool holders” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that said “common holding mechanism” is interpreted as comprising the structure disclosed within paragraph [0011] of Applicant's specification filed on 1/28/2023, as well as equivalents thereto.
With respect to the prior art and EP '933, each of the plurality of holding parts (8, 9) has a respective common shelf (3, 4) that is capable of holding any of a plurality of tool holders. Thus, each respective common shelf (3, 4) is an equivalent of the common holding mechanism of the claims. This is because each respective common shelf (3, 4) carries out the function of, “holding any of a plurality of tool holders.” Also, each respective common shelf (3, 4) is not excluded by any explicit definition that is provided in Applicant’s specification, and each respective common shelf (3, 4) of EP '933 produces substantially the same results as the corresponding, “common holding mechanism” of Applicant. Thus, each respective common shelf (3, 4) of EP '933 will hereinafter be referred to by Examiner as a “common holding mechanism.” As such, each of the plurality of holding parts (8, 9) has a respective common holding mechanism (3, 4) which is capable of holding any of a plurality of tool holders. (Please note that each processing tool (18) has a corresponding tool holder).
Next, as can be seen in at least Figure 5 of EP '933, the tool transport system further comprises a transport device (6) that transports, for example, a designated tool holder of the plurality of tool holders stored in the tool storage portion (1) to a designated machine tool, e.g. machine tool (29), of the plurality of machine tools (2, 29). Additionally/Alternatively, the tool transport system further comprises a transport device (5) that transports, for example, a designated tool holder of the plurality of tool holders stored in the tool storage portion (1) to a designated machine tool, e.g. machine tool (2), of the plurality of machine tools (2, 29).
Regarding holding part (8) of the plurality of holding parts (8, 9), on its common holding mechanism (3), it holds a first tool holder of the plurality of tool holders. This can be seen in at least Figure 3. Likewise, holding part (9) of the plurality of holding parts (8, 9), on its common holding mechanism (4), holds a second tool holder of the plurality of tool holders. (It’s reiterated that each processing tool (18) has a corresponding tool holder).
Regarding the first tool holder and the second tool holder though, EP '933 does not provide disclosure on the first tool holder having, “a common connection mechanism that is connectable to the common holding mechanism, and a first attachment mechanism to which a first tool to be used in a first machine tool of the plurality of machine tools is attachable,” and likewise does not provide disclosure on the second tool holder having, “a second tool holder of the plurality of tool holders having the common connection mechanism, and a second attachment mechanism to which a second tool to be used in a second machine tool of the plurality of machine tools is attachable.”
Next, please be advised that “common connection mechanism that is connectable to the common holding mechanism” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Be advised that said “common connection mechanism” is interpreted as comprising the structure disclosed within paragraph [0011] of Applicant's specification filed on 1/28/2023, as well as equivalents thereto.
Furthermore, “first attachment mechanism to which a first tool to be used in a first machine tool of the plurality of machine tools is attachable” and “second attachment mechanism to which a second tool to be used in a second machine tool of the plurality of machine tools is attachable” are each being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that said “first attachment mechanism” is interpreted as comprising the structure disclosed within paragraph [0052] of Applicant's specification filed on 1/28/2023, as well as equivalents thereto, and said “second attachment mechanism” is interpreted as comprising the structure disclosed within paragraph [0053] of Applicant's specification filed on 1/28/2023, as well as equivalents thereto.
With respect to the prior art and EP '373, attention is directed to Figures 4 and 5 thereof. As can be seen in Figures 4 and 5, the processing tool (17) is shown as having a respective tool holder (33). This tool holder (33) at its distal end has an tool attachment means to which a given tool, e.g. a first tool or a second tool, to be used in a machine tool is attachable. (Figure 4 shows a cutting tool bit being attached the tool attachment means of the tool holder (33), for example). Also, the processing tool (17) has at its proximal end a common connector that is, for example, connectable to the common holding mechanism (3) of a corresponding holding part (8) and is further connectable to the common holding mechanism (4) of a corresponding holding part (9) (see Figure 2 for said common holding mechanism (3, 4)).
Noting the above, the tool attachment means of the tool holder (33) shown in Figures 4-5
is an equivalent of the first and second attachment mechanisms of the claims. This is because the tool attachment means carries out the functions of, “to which a first tool to be used in a first machine tool of the plurality of machine tools is attachable” and “to which a second tool to be used in a second machine tool of the plurality of machine tools is attachable.” Also, the tool attachment means of the tool holder (33) of EP '373 is not excluded by any explicit definition provided in Applicant’s specification, and the tool attachment means of the tool holder (33) of EP '373 produces substantially the same results as the corresponding “first attachment mechanism” of Applicant and the same results as the corresponding “second attachment mechanism” of Applicant. Thus, the tool attachment means of the tool holder (33) will hereinafter be referred to by Examiner as an “attachment mechanism.”
Also, the common connector of the tool holder (33) shown in Figures 4-5 is an equivalent of the common connection mechanism of the claims. This is because the common connection mechanism carries out the function of, “connectable to the common holding mechanism.” Also, the common connector of the tool holder (33) of EP '373 is not excluded by any explicit definition provided in Applicant’s specification, and the common connector of the tool holder (33) of EP '373 produces substantially the same results as the corresponding “common connection mechanism” of Applicant. Thus, the common connector of the tool holder (33) will hereinafter be referred to by Examiner as “common connection mechanism.”
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the specific tool holder (33) having an attachment mechanism and common connection mechanism of EP '373 for each generic tool holder of a processing tool (18) of EP '933, as this is substitution of one known tool holder for another, in order to obtain the predictable result of each tool holder (33) of a modified processing tool (18) of EP ‘933 being connectable to the common holding mechanism (3, 4) by means of its common connection mechanism and each tool holder (33) of a modified processing tool (18) of EP ‘933 having a tool attached thereto that is to be used.
Based on the foregoing, a tool holder (33) to be received within the common holding mechanism (3) of corresponding holding part (8) is a first tool holder (33) having the common connection mechanism that is connectable to the common holding mechanism (3), and further having the attachment mechanism (hereinafter “first attachment mechanism”) to which a first tool to be used in a first machine tool (2) of the plurality of machine tools (2, 29) is attachable. Also, the first tool attachable to the to the first tool holder (33) can be, for example, a vertical or horizontal milling tool [EPO Machine Translation of EP '933, paragraph 0009]. As such, the first tool when embodied as a milling tool conforms to a first tool standard, the first tool standard being a milling tool standard, for example. (Please be advised that Applicant hasn’t set forth what the “first tool standard” actually is, and hasn’t limited the “first tool standard” to applying to any particular part of the first tool, e.g. to the shank part thereof or to the bit thereof).
Likewise, a tool holder (33) to be received within the common holding mechanism (4) of corresponding holding part (9) is a second tool holder (33) having the common connection mechanism that is connectable to the common holding mechanism (4), and further having the attachment mechanism (hereinafter “second attachment mechanism”) to which a second tool to be used in a second machine tool (29) of the plurality of machine tools (2, 29) is attachable. Also, the second tool attachable to the to the second tool holder (33) can be, for example, a drilling tool [EPO Machine Translation of EP '933, paragraph 0009]. As such, the second tool when embodied as a drilling tool conforms to a second tool standard, the second tool standard being a drilling tool standard, for example, that is different than the first tool standard. (Please be advised that Applicant hasn’t set forth what the “second tool standard” actually is, and hasn’t limited the “second tool standard” to applying to any particular part of the second tool, e.g. to the shank part thereof or to the bit thereof).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Vitale whose telephone number is (571)270-5098. The examiner can normally be reached Monday - Friday 8:30 AM- 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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