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 (claims 1-9 and 17-18), drawn to a “machine tool”, in the reply filed on October 10, 2025 is acknowledged.
Claims 10-16 and 19-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 October 10, 2025.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “12” has been used to designate both a “third chuck” in Figure 3, and an “additional support element” in Figures 2 and 6A-6C (which “additional support element has a different structure than the third chuck of Figure 3). For example, on page 17, line 28 through page 18, line 11 of the marked-up substitute specification filed 2/24/2023, the specification indicates that element 12 in Fig. 3 is a third chuck, whereas page 17, lines 23-27 of the marked-up substitute specification filed 2/24/2023 indicates that element 12 in Fig. 2 is an “additional support element” that is “in the form of (dead or live) centers to support the workpieces by their axial ends”, and goes on to say that in Fig. 2, chucks 11, 21 and drive means are only present at one end of each workpiece, which is a further indication that 12 and 22 in Figure 2 are not chucks. 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “22” has been used to designate both a “fourth chuck” in Figure 3, and an “additional support element” in Figures 2 and 6A-6C (which “additional support element has a different structure than the third chuck of Figure 3). For example, page 17, line 28 through page 18, line 11 of the marked-up substitute specification filed 2/24/2023, indicates that element 22 in Fig. 3 is a fourth chuck, whereas page 17, lines 23-27 of the marked-up substitute specification filed 2/24/2023 says that element 22 in Fig. 3 is an “additional support element” that is “in the form of (dead or live) centers to support the workpieces by their axial ends”, and goes on to say that in Fig. 2, chucks 11, 21 and drive means are only present at one end of each workpiece, which is a further indication that 12 and 22 in Figure 2 are not chucks. 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. 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.
While it is noted that page 20, lines 29-37 of the marked-up substitute specification filed 2/24/2023 indicates that the reference characters 12 and 22 can be a chuck, or can be a dead or live center, it is noted that the elements 12 and 22 are still shown as different elements (having different structures/configurations) in Figures 2, 6A, 6B, and 6C vs. Figure 3, as described above. Applicant may wish to consider adding an letter such as “A” after the numbers 12 and 22 in, for example, Figure 3, (and in the supporting portions of the specification) to differentiate between the different shown structures.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“first workpiece support means” (noting that claim 1 recites that “the first workpiece support means comprise at least a first chuck for clamping a first end of the first workpiece, and a first additional support element for supporting a second end of the first workpiece, the first chuck and the first additional support element facing each other along a first horizontal axis so as to allow for rotation of the first workpiece around the first horizontal axis”, and “the first workpiece support means comprise drive means for applying torque to the first workpiece via the first chuck to rotate the first workpiece around the first horizontal axis for machining of the first workpiece by turning”); and
“second workpiece support means” (noting that claim 1 recites that “the second workpiece support means comprise at least a second chuck for clamping a first end of the second workpiece and a second additional support element for supporting a second end of the second workpiece, the second chuck and the second additional support element facing each other along a second horizontal axis so as to allow for rotation of the second workpiece around the second horizontal axis” and “the second workpiece support means comprise drive means for applying torque to the second workpiece via the second chuck to rotate the second workpiece around the second horizontal axis for machining of the second workpiece by turning”).
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Comment on Claim Language
It is noted that in each of claims 17-18, the claim sets forth “wherein the second inner diameter is substantially larger than the first inner diameter and/or than the third inner diameter”. It is noted that the term “substantially larger” is a relative term or term of degree. It is also noted that the specification provides a standard for determining the requisite degree. In particular, attention is directed to page 10, lines 23-25, which states
The second inner diameter is substantially larger (such as at least 25%, 50%, 75% or 100% larger) than the first inner diameter (d1) and/or than the third inner diameter (d3). The larger diameter of the workpiece-spindle in correspondence with the second end provides for space for housing the retractable jaw chuck, or at least part thereof, within the workpiece-spindle itself, thereby allowing for a reduced axial extension of the motor and chuck assembly, which can be especially advantageous when the motor and chuck assembly is to be used in a turning machine where the workpiece-spindle extends in the horizontal direction while mounted on a support intended to rotate around a vertical axis, such as in the machine tool described above, or similar.
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 1-9 and 17-18 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 3-5, the claim recites “a workpiece support column having a first workpiece support side comprising first workpiece support means for supporting a first workpiece and second workpiece support means for supporting a second workpiece”. However, it is unclear as set forth in the claim with what “and second workpiece support means for supporting a second workpiece” is intended to go, i.e., “a workpiece support column having…”, “a first workpiece support side comprising…”, or “first workpiece support means for supporting…”.
There are several positively recited limitations that lack sufficient antecedent bases in the claims. Examples of this are: .
“the machine” in claim 3, line 1, and in claim 4, line 4;
“the workpiece” in claim 4, lines 2-3, claim 4, line 3, claim 4, line 5, claim 4, line 6 (plural occurrences in line 6), claim 4, line 7, claim 4, line 8, claim 4, line 9 (plural occurrences in line 9), and claim 4, line 10 (plural workpieces previously recited);
“the radial direction” in claim 4, line 3 (no radial direction previously expressly recited, nor is it inherent that there is only one radial direction, particularly noting that plural axes of rotation were previously recited);
“the chuck” in claim 4, lines 3-4 (plural chucks previously recited);
“the corresponding part of the workpiece” in claim 4, lines 6 and 9 (no such “corresponding part” of a workpiece was previously recited, and furthermore, plural workpieces were previously recited);
“the workpieces” in claim 6, penultimate line (plural workpieces/sets of workpieces previously recited);
“the second end” in claim 17, lines 6-7, 8-9, and 11, and in claim 18, lines 6-7, 8-9, 11, 16, and 18 (noting that plural “second ends” were previously set forth, rendering it unclear which “second end” is intended to be referenced, e.g., a “second end of the first workpiece” in claim 1, a “second end of the second workpiece” in claim 1, or “a second end” of the “workpiece-spindle” of claims 17-18); and
“the first end” in claim 17, line 8, and 10-11, and in claim 18, lines 8, 10-11, 15, and 18 (noting that plural “first ends” were previously set forth, rendering it unclear which “first end” is intended to be referenced, e.g., a “first end of the first workpiece” in claim 1, a “first end of the second workpiece” in claim 1, or “a first end” of the “workpiece-spindle” of claims 17-18).
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.
In claim 4, lines 5-7, the claim recites “withdraw the jaws of the first chuck from the workpiece to allow for machining of the corresponding part of the workpiece while rotating the workpiece by applying torque to the workpiece via the third chuck”. It is noted that there are a number of terms in this limitation that lack sufficient clear antecedent basis in the claim, as noted above. That said, additionally, it is unclear as claimed to what the recited “corresponding part of the workpiece” is to be considered to correspond, i.e., part of the workpiece that corresponds to what? The same issue(s) likewise exist(s) in claim 4, lines 8-10 in the similar limitation “withdraw the jaws of the third chuck from the workpiece to allow for machining of the corresponding part of the workpiece while rotating the workpiece by applying torque to the workpiece via the first chuck”.
In claim 7, the claim sets forth “wherein the workpiece support column, including the first workpiece support means and the second workpiece support means, is dimensioned to fit into a cylinder that is co-axial with the vertical axis and that has a diameter of less than 2.5 m, while allowing for turning of workpieces having a length of 0.75 m”. However, given that claim 1 (from which claim 7 depends) previously mentioned “machining of the first workpiece by turning” and “machining of the second workpiece by turning”, and given that claim 1 also previously set forth that “the workpiece support column is rotatable about a vertical axis so as to shift the workpieces…”, it is unclear as set forth in claim 7 whether the limitation “allowing for turning of workpieces having a length of 0.75 m” is intended to reference turning as in the “machining” of workpieces by a turning (i.e., lathing) operation, or whether “allowing for turning of workpieces having a length of 0.75 m” is instead intended to reference turning of workpieces as in the turning/rotation of such workpieces about (for example) the vertical axis as the workpiece support column rotates about such vertical axis.
In each of claims 17 and 18, the claim recites “wherein at least one of the workpiece support means comprises a motor and chuck assembly comprising an electric motor comprising a stator and a rotor placed radially inside the stator”. However, it is unclear as claimed whether the claim intends to require an assembly that is a “motor and chuck” assembly, or whether the claim intends to require a “chuck assembly” and a motor, i.e., it is unclear as claimed in the limitation “motor and chuck assembly” whether “assembly” is intended to go only with “chuck”, or whether “assembly” is also intended to go with “motor”. That being said, it is unclear how many motors are being set forth in claims 17-18, i.e., one (that is part of an assembly that is a “motor and chuck assembly”), or two (i.e., the motor set forth in line 2, as well as the “electric motor of line 3, in the event that the claim sets forth both a “chuck assembly” and a “motor” in line 2).
In claims 17-18, line 6 (of each of these claims), it is unclear as set forth in the claim whether the recited “retractable jaw chuck” is intended to be the same as one of the previously recited chucks (noting that claim 1 previously set forth “the first workpiece support means comprise at least a first chuck…” and “the second workpiece support means comprise at least a second chuck…”), or whether the recited “retractable jaw chuck” of claims 17-18 is instead intended to be additional to the previously-recited chucks, thus rendering it unclear how many chucks are intended to be required by claims 17-18. Furthermore, in the event that the recited “retractable jaw chuck” in claims 17-18 is intended to be the same as one of the previously recited chucks, it is unclear which of the previously-recited chucks that the “retractable jaw chuck” of claims 17-18 intended to reference.
In claim 17, line 7, and claim 18, line 7, it is unclear as set forth in the claim whether “a workpiece” is intended to be a subset of the workpieces previously set forth in the claims, or is instead intended to refer to a different/additional workpiece.
Regarding claim 18, the phrase "such as" (plural occurrences; see each of lines 19, 20, and 22-23) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation “the axial length is less than three times the fifth inner diameter”, and the claim also recites “such as less than two times the fifth inner diameter, such as less than 1.5 times the fifth inner diameter” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation “wherein the fifth inner diameter is larger than 0.5 S”, and the claim also recites “for example, larger than 0.75 S, such as larger than 0.9S” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 18, last two lines, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended (without broadening) to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-9 and 17-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
It is noted that an Examiner’s Statement of Reasons for Allowance will be provided in a future Office Action at the time of Allowance, should the application be in condition for allowance in the future.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA E CADUGAN whose telephone number is (571)272-4474. The examiner can normally be reached Monday-Thursday, 5:30 a.m. to 4:00 p.m. ET.
Examiner interviews are available via telephone, and via video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
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December 11, 2025