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 1-10) in the reply filed on December 10, 2025 is acknowledged.
Claims 11-19 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 valves in claim 9 and the at least one lubricant supply device recited in claim 10 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.
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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 tool in claim 1; receiving arrangement in claim 1; drilling device in claim 4; milling device in claim 5; and lubricant supply device in claim 10.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “[a] use of a machine tool for machining pockets” in Lines 1-2. It is unclear whether the claim is a method (but there aren’t any method steps) or if the claim is a machine with an intended use environment. Appropriate correction required.
Claim 1 recites “the machine tool is designed to comprise” in Line 3. It is unclear what is required by the machine tool being designed to include the recited features. In particular, it is unclear if it is not enough to simply include the features, the machine tool merely has a design not brought into fruition, or if there something more that must be included to meet the “designed” to include limitation. Similar language is recited in Lines 5-6 and is rejected on the same grounds. Appropriate correction required.
Claim 1 limitation “clamping means” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 1 limitation “receiving arrangement” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification identifies the clamping means as detail 1 and the receiving arrangement as detail 2, which both point to the same feature in the drawings. Regardless, the scope of each is unclear because neither is disclosed with any particularity in the written description. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 1 recites “a workpiece on a workpiece support” in Lines 7-8. Antecedent basis for “a workpiece” and “a workpiece support” has already been set forth in Lines 2 and 3, respectively. As such, it is unclear whether the limitations are the same as previously set forth or whether the limitations are new/different features. Appropriate correction required.
Claim 1 recites “the pressure plate on the workpiece can be adjusted in a defined manner” in Line 10. The phrase “can be” infers an option, which creates a lack of clarity within the claim. Examiner suggests reciting capability (e.g., the pressure plate . . . is capable of being adjusted) if that is the desired scope intended. Furthermore, the scope of “defined manner” is unclear. The boundary of when the pressure plate is capable of being adjusted in a defined manner and not in a defined manner is unclear. Appropriate correction required.
Claim 1 recites “the machining tool can be guided” in Line 12. The phrase “can be” infers an option, which creates a lack of clarity within the claim. Examiner suggests reciting capability (e.g., is capable of being guided) if that is the desired scope intended. Appropriate correction required.
Claim 2 recites “the pressure plate is annular and forms the passage opening” in Lines 1-2. It is unclear if the passage opening is merely a result of the annular shape or if the passage opening is somehow formed by the pressure plate in another manner. Appropriate clarification required.
Claim 3 recites “the machining tool can be guided” in Line 2. The phrase “can be” infers an option, which creates a lack of clarity within the claim. Examiner suggests reciting capability (e.g., is capable of being guided) if that is the desired scope intended. Appropriate correction required.
Claim 3 recites “when machining the workpiece” in Lines 3-4. The term “when” renders the claim indefinite as it is unclear if the limitations surrounding the term are required if the “when” condition never happens. Appropriate correction required.
Claim 3 limitation “means of the pressure plate” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. It is unclear if the workpiece is merely pressed against the support by the pressure plate or if there are other means not disclosed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 4 limitation “drilling device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 4 recites “the machining tool is formed by a drilling device.” It is unclear if the machining tool is a drilling device or it is somehow formed, as the language suggest, by a drilling device. Appropriate correction required.
Claim 5 limitation “milling device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 5 recites “the machining tool is formed by a milling device.” It is unclear if the machining tool is a milling device or it is somehow formed, as the language suggest, by a milling device. Appropriate correction required.
Claim 6 recites “at least one pocket for receiving a rolling element on a workpiece in the form of a rolling bearing cage” in Lines 7-8. Antecedent basis for “at least one pocket,” “a rolling element,” “a workpiece,” and “a rolling bearing cage” has already been set forth in claim 1. As such, it is unclear whether the limitations are the same as previously set forth or whether the limitations are new/different features. Appropriate correction required.
Claim 9 recites “the at least one pressure cylinder can be adjusted via valves.” The phrase “can be” infers an option, which creates a lack of clarity within the claim. Examiner suggests reciting capability (e.g., is capable of being adjusted) if that is the desired scope intended. Appropriate correction required.
Claim 10 limitation “lubricant supply device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10 are rejected under 35 U.S.C. 101 because the claim sets forth a use but fails to claim a process, machine, manufacture, or composition of matter. There aren’t any method steps within the use claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sullivan (US Patent No. 3,617,141).
(Claim 1) As best understood, Sullivan discloses an intended use of a machine tool capable of machining pockets for receiving rolling elements on a workpiece in the form of a rolling bearing cage (Figs. 1-7). The machine tool is, as best understood, designed to comprise a workpiece support (12) and a main spindle (29 corresponding to pressure foot 90). A machining tool (28) and, as best understood, a clamping means (24) are fastened to the main spindle (Fig. 6). The clamping means is, as best understood, designed to comprise a receiving arrangement (as best understood, the arrangement in Fig. 7 shows the connection between the clamping means and the spindle) for fastening the clamping means to the main spindle of the machine tool. A pressure plate (90) for pressing a workpiece on a workpiece support (Fig. 6). The receiving arrangement and the pressure plate are connected via at least one pressure cylinder (93, 93a). A contact pressure of the pressure plate on the workpiece can be adjusted in a defined manner by means of the at least one pressure cylinder (Col. 6, Lines 1-3). The machining tool is arranged in such a way that the machining tool can be guided through a passage opening in the pressure plate during the machining of the workpiece pressed against the workpiece support by means of the pressure plate (Fig. 6).
(Claim 2) The pressure plate is annular (98; Col. 5, Lines 50-51) and, as best understood, forms the passage opening for the machining tool fastened to the spindle (Figs. 5-7).
(Claim 3) The machining tool (28) is arranged in such a way that the machining tool can be guided centrally through the passage opening in the pressure plate when machining the workpiece pressed against the workpiece support by means of the pressure plate (Figs. 5-7).
(Claim 4) The machining tool (28), as best understood, is capable of being formed by a drilling device.
(Claim 5) The machining tool (28), as best understood, is capable of being formed by a milling device.
(Claim 6) The production of at least one pocket for receiving a rolling element on a workpiece in the form of a rolling bearing cage comprises the following steps: providing the machine tool, fixing a position of the rolling bearing cage on the workpiece support, pressing the rolling bearing cage against the workpiece support (Fig. 6), using the pressure plate, forming a first pocket using the machining tool (28), and detaching the pressure plate from the rolling bearing cage. Because this is an intended use limitation, the machine tool reads upon the claimed intended use steps by being functionally capable of performing said use.
(Claim 7) The at least one pocket is capable of being drilled or milled (via machining tool 28).
(Claim 8) The rolling bearing cage is capable of being formed from copper or a copper-based alloy. The bearing cage is not part of the claimed invention, which, as best understood is the apparatus of the machine tool. The workpiece is merely an intended use limitation.
(Claim 9) A spring force of the at least one pressure cylinder (93, 93a) can be adjusted via valves. While this limitation may be intended use, the Sullivan reference disclose the use of valves for limiting pressure to the cylinders (Col. 5, Lines 69-72).
(Claim 10) As best understood, at least one lubricant supply device (106, 108) is provided on the clamping means. That is, the ports could be used to add a mist of air and lubricant.
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sullivan (US Patent No. 3,617,141).
In the event the capability mentioned above is lacking, as best understood, at least one lubricant supply device is on the clamping means is well-known in the art such that examiner takes official notice of the fact. As such, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide at least one lubricant supply device as claimed in order to provide lubricant to the cutting area (reducing heat/friction at the cutting point).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
Examiner interviews are available via telephone, in-person, and 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, Singh Sunil 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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/RYAN RUFO/Primary Examiner, Art Unit 3722