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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-21 of copending Application No. 18/564,949 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recited in the co-pending application anticipate the claimed invention. The only difference being the claim limitation of 17 current application is recited in claim 11 of co-pending application and thus is anticipated.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 “fork-like support” recited in claim 14 must be shown or the feature(s) canceled from the claim(s). 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.
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: machining head, rotary support means recited 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 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 14 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.
The term “fork-like support” in claim 14 is indefinite. The term “fork-like support” 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. The claim has been interpreted as best understood by the examiner.
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(s) 12-14, 17-19 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanoue et al. US 2006/0291971 in view of Ferrari et al. US 6655884 and Kim WO 2009/093877.
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Tanoue discloses a machining center (3, see Fig. 3 above) comprising: an independent carriage (9) supported to slide along a longitudinal translation axis by a pair of parallel horizontal rails (21, 30) which extend along a longitudinal direction and are fixed in a raised position to a supporting structure (8, 15, 16), said carriage supporting a respective machining head (2) which is configured to move along a respective transverse translation axis (26, Y-axis) and along a respective vertical translation axis (29, Z-axis) by respective guiding means (26, 29), said machining head supporting a respective tool holding spindle (T) in a rotatable manner about a horizontal rotation axis by rotary support means (13), said machining center further comprising a workpiece holding table (5) which is supported at a base (floor) of said supporting structure, and a mechanized tool magazine (38) supported at an opposite longitudinal end of said supporting structure in order to be accessible by said spindle (2), said at least one of said rotary support means (38) and said workpiece holding table being able to rotate about a respective vertical axis (Rotary support means 38, rotates about A-axis, C-Axis, see Fig. 10).
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Tanoue does not specify wherein there are two independent carriages supported on the machining center with respective supports as claimed above. However, Ferrari teaches the use of two independent carriages (2 and 3) similarly supported as claimed and disclosed by Tanoue. Ferrari further teaches wherein “In certain mechanical engineering industries, such as the automotive and aeronautical industries, where components to be machined may be extremely large, the automatic machinery used must be designed to support large bulky workpieces. For this reason, automatic machine tools or machining centers are known to have two parallel longitudinal guides each supported by a corresponding upright. The operating units that machine the workpiece are mounted on crossbeams which run in the guides” (col. 1, lines 12-20). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify the machining center of Tanoue to include a second independent carriage with its own independent movement supports as taught by Ferrari in order to provide a machining center that can process large components efficiently.
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Tanoue discloses a workpiece holding table (5) as claimed but does not specify wherein said workpiece holding table is capable of rotating about a respective vertical axis. However, the use of rotary tables is well known in the art as evidence by Lee who teaches a machining center having a workpiece holding table (433, 450) capable of rotating about a vertical axis (shown in Figure above). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify and/or substitute the workpiece holding table of Tanoue to include a rotary table as taught by Lee in order to provide additional degrees of freedom for the machining center to use to process and/or machine complex workpiece geometry.
As for claim 13, the modified Tanoue teaches wherein said guiding means comprise, for each one of said carriages (9), a slider (Tanoue, 10, see Fig. 3 and 10) configured to slide along a respective horizontal guide (Tanoue, 26, see Figs. 3 and 10) which is integral with the carriage (Tanoue, 9, see Fig. 3) and extends in a transverse direction, and, for each one of said sliders, a vertical guide (Tanoue, 29, Figs. 3 and 10) which is integral with the slider (Tanoue, 10) and is engaged slidingly by a respective one of the machining heads (Tanoue, 2).
As for claim 14, the modified Tanoue teaches wherein said rotary support means (38) comprise a fork-like support (see Tanoue, Fig. 10).
As for claim 17, the modified Tanoue teaches wherein said workpiece holding table is configured to rotate about a vertical axis (see claim 11 rejection, Lee teaches rotary table 450).
As for claim 18, the modified Tanoue teaches wherein said workpiece holding table is arranged in a position that is longitudinally centered and transversely offset (see Lee, Fig. 18).
As for claim 19, the modified Tanoue teaches wherein at least one of said two mechanized tool magazines (Tanoue, 38) comprises a rotating tool holding drum (see Tanoue, Fig. 3), which is arranged so that an axis thereof is horizontal and transverse and supports peripherally a plurality of tools (Tanoue, Tn).
As for claim 22, the modifed Tanoue teaches wherein each one of said rotary support means (Tanoue, 38) is configured to rotate about an axis (Tanoue, Fig. 10, A-axis and C-axis) that is parallel to, or coincides with, a respective vertical translation axis (Tanoue, Fig. 10, Y-axis and Z-axis respectively).
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanoue et al. US 2006/0291971 in view of Ferrari et al. US 6655884 and Kim WO 2009/093877 as applied to claim 12 above, and further in view of Seo et al. US 2016/0167182.
As for claims 15 and 16, the modified Tanoue discloses all the limitations as recited above but does not specify wherein said supporting structure is provided with a base which comprises two longitudinally mutually opposite chutes which lead into a chip discharge area. However, the use of chutes and discharge areas for removing debris being machines is well known in the art as evidence by Seo who teaches a machining center having a support structure with a base (11) comprising two longitudinally mutually opposite chutes (13b) which lead into a chip discharge area (13c). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify the machining center of Tanoue to include two opposite chutes which lead to a chip discharge area as taught by Seo in order to provide a means to minimize the accumulation of chips and decrease machining accuracy due to thermal expansion of the machine (Seo, ¶0048).
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Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanoue et al. US 2006/0291971 in view of Ferrari et al. US 6655884 and Kim WO 2009/093877 as applied to claim 12 above, and further in view of Azema WO 97/41997 A1.
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As for claims 20 and 21, the modified Tanoue teaches all the limitations as recited above but does not specify wherein each one of said two mechanized tool magazines is provided with a shield that is adapted to shelter, during machining, a respective tool magazine from machining chips and wherein said shield is fixed to a respective rotating tool holding drum. However, Azema teaches a machining center having a mechanized tool magazine (500) wherein the mechanized tool magazine is a rotatable drum (510) and is provided with a shield (520) that is adapted to shelter, during machining, a respective tool magazine from machining chips and wherein said shield is fixed to a respective rotating tool holding drum (see Fig. 2). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify the mechanized tool magazine of Tanoue to include a shield as taught by Azema to protect the various tools not in use from being damaged from debris during machining of the workpiece.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYRONE V HALL JR whose telephone number is (571)270-5948. The examiner can normally be reached Mon.-Fri. 7:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at (571) 272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TYRONE V HALL JR/Primary Examiner, Art Unit 3723