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 .
Information Disclosure Statement
The (2) information disclosure statements (IDS) submitted on 03/22/2024, and 11/22/2022 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement are being considered by the examiner.
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 “wherein the integrated external flushing system comprises a guide arm supporting the electrode guide.” in claim 6 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 limitations are:
In claim 3:
The limitation “an internal flushing system” in line 2
“system” is the generic placeholder.
“internal flushing” is the functional language.
In claim 9:
The limitation “a rotating tube system” in line 2
“system” is the generic placeholder.
“rotating tube” is the functional language.
In claim 10:
The limitation “an electrical discharge machining system” in line 2
“system” is the generic placeholder.
“electrical discharge machining” is the functional language.
The limitation “an integrated external flushing system” in line 5
“system” is the generic placeholder.
“integrated external flushing” is the functional language.
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.
A review of the specification shows that, the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation:
The limitation “a rotating tube system" in line 2 of claim 9 has been described in the published specification as the rotating tube electrode device 60 that may include “a pneumatic rotary driver 65 including an air motor 70 (having compressed air inlet 72 and outlet 74), a water inlet 75 upstream of the air motor 70 (with adjacent seal 77), and a rotor 80 coupled with the air motor 70 (where rotor 80 is supported on bearings 85). In this configuration, the rotating tube electrode device 65 may rotate the electrode 30”.
The limitation “an electrical discharge machining system” in line 2 of claim 10 has been described to include the structures as recited in claim 1.
The limitation “an integrated external flushing system” in line 5 of claim 10 has been described to include the structures as recited in claim 6.
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 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 3-4 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 3:
The corresponding structure of “an internal flushing system” in line 2 is not supported in the original disclosure as interpreted under 35 U.S.C 112(f). Therefore, since the Specification does not clearly identify what the corresponding structure of the “an internal flushing system” is, there is a presumption that the applicant didn’t possess the invention at the time of filing, i.e. lack of written description.
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 3-4 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 pre-AIA the applicant regards as the invention.
In claim 6:
The limitation "wherein the integrated external flushing system comprises a guide arm supporting the electrode guide." renders the claim indefinite because it is unclear how this is achieved. According to published specification, para. 0017; fig. 5, the guide arm is defined as the guide arm 115 and the electrode guide as the electrode guide 120. It appears that there is a channel between the guide arm 115 and the electrode guide 120. It is unclear how can the guide arm 115 supports the electrode guide 120 because they are separated by the channel. The drawing objection is also made.
For the purpose of substantive examination, it is presumed to read “wherein the integrated external flushing system comprises a guide arm thermally contacts the electrode guide."
In claim 3:
The claim limitation “an internal flushing system” in line 2 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as noted above. 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.
In the original specification, “an internal flushing system” is not disclosed structurally. The proper structure must be disclosed in a way that one of ordinary skill in the art will understand what the inventor has identified to perform the recited 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 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 1-2, and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi (US 20210039181)
Regarding Claim 1, Takahashi discloses an electrical discharge machining system (electric discharge machining unit; title) for drilling a hole in a workpiece using a flushing fluid (“for drilling a hole in a workpiece using a flushing fluid” is a statement of intended use), comprising:
an electrode (tool electrode 1);
the electrode positioned in an electrode guide (die 17a, annotated fig. 1 and also fig. 5, para. 0044); and
an integrated external flushing system (it is noted the system as annotated in fig. 1 below comprises the flushing channel that is external to the tool electrode 1);
the integrated external flushing system comprising a guide cap (annotated fig. 1) and a concentric flushing channel (flow path 9) (para. 0038) defined between the guide cap and the electrode guide (it is noted the flow path 9 is defined between the annotated guide cap and the die 17a) so as to allow the flushing fluid (working fluid) to remain attached to the electrode guide (die 17a) (“working fluid filling region 9c is filled with the working fluid. Consequently, the tool electrode 1 inserted through the working fluid filling region 9c can be efficiently cooled with the working fluid flowing in the working fluid filling region 9c,”, para. 0038 and also 0045. It is noted the working fluid is fluidly connected to the die 17a as evident in figs. 1 and 5).
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Regarding Claim 2, Takahashi discloses the electrical discharge machining system (electric discharge machining unit; title), wherein the integrated external flushing system (annotated fig. 1 of claim 1) comprises a flushing fluid source (working fluid supplying device 5) in communication with the concentric flushing channel (flow path 9) (para. 0038).
Regarding Claim 5, Takahashi discloses the electrical discharge machining system (electric discharge machining unit; title), wherein the electrode guide (die 17a; fig. 5) accommodates a plurality of differently sized electrodes (tool electrodes) (para. 0044. It is noted the die 17a is capable of accommodating the tool electrodes of different sizes).
Regarding Claim 6, Takahashi discloses the electrical discharge machining system (electric discharge machining unit; title), wherein the integrated external flushing system (annotated fig. 1) comprises a guide arm (annotated fig. 1) supporting the electrode guide (annotated fig. 1).
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Regarding Claim 7, Takahashi discloses the electrical discharge machining system (electric discharge machining unit; title), wherein the concentric flushing channel (flow path 9) extends between the electrode guide (die 17a; annotated fig. 1) and the guide arm (annotated fig. 1) in part.
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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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3-4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US 20210039181) in view of Lamphere (US 20050247569)
Regarding Claim 3, Takahashi discloses substantially all of the claimed features as set forth above, except the electrode comprises an internal flushing system.
However, Lamphere discloses an electrode (electrode 12; fig. 2) comprises an internal flushing system (channel in the electrode 12 through which electrolyte 30 travel through the electrode 12) (para. 0032).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrode of Takahashi to include the internal flushing system as taught by Lamphere, in order to help cool the electrode during operation, thereby prolong the lifetime of the electrode.
Regarding Claim 4, Lamphere discloses the internal flushing system (channel in the electrode 12 disclosed by Lamphere) is in communication with the flushing fluid source (electrolyte supply 26) (fig. 2).
Regarding Claim 10, Takahashi discloses a method of reducing debris about an electrode while drilling a hole in a workpiece (workpiece) with an electrical discharge machining system (abstract and 0001-0002), comprising:
drilling the hole with the electrode (electrode) (para. 0002 and 0032. It is noted the workpiece is machined by rotating the electrode against the workpiece, therefore the hole is formed in the workpiece);
flowing flushing fluid through an integrated external flushing system (annotated fig. 1) about an electrode guide (fig. 1) (para. 0038. It is noted the system as annotated in fig. 1 below comprises the flushing channel that is external to the tool electrode 1); and
continuing to flow flushing fluid through the integrated external flushing system as the electrode breaks out of the workpiece (“the consumption of the tool electrode 1 during electric discharge machining can be suppressed.”, para. 0038).
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Takahashi does not disclose the method comprising flowing flushing fluid through an internal flushing chamber within the electrode.
However, Lamphere discloses an electrode (electrode 12; fig. 2) comprises an internal flushing system (channel in the electrode 12 through which electrolyte 30 travel through the electrode 12) (para. 0032).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Takahashi to flush fluid through the internal flushing chamber within the electrode as taught by Lamphere, in order to help cool the electrode during operation, thereby prolong the lifetime of the electrode.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (US 20210039181) in view of Ishiwata (US 20040262266)
Regarding Claim 8, Takahashi discloses substantially all of the claimed features as set forth above, except further comprising a piston in communication with the electrode.
However, Ishiwata discloses an electrical discharge machining system (electric discharge machining device) comprises a piston (cylinder; fig. 4) in communication with the electrode (electrode) (abstract and 0039).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the machining system of Takahashi to include the piston in communication with the electrode as taught by Ishiwata, in order to move the electrode in the up and down direction to position the electrode at the desired position with respect to the workpiece.
Regarding Claim 9, the modification discloses substantially all of the claimed features as set forth above, except further comprising a rotating tube system in communication with the piston.
However, Ishiwata further discloses a rotating tube system (motor) in communication with the piston (cylinder) (para. 0042-0043)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the motor of Takahashi in view of Ishiwata (i.e. claimed rotating tube system) to be in communication with the piston (cylinder of Ishiwata) as further taught by Yamazaki, in order to set the electrode at desired position on the Z-axis while the electrode is being rotated by the motor such that the electrode can be set at the desired position with respect to the workpiece.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yokomichi (US 20050077269): Fig. 4.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONITA KHLOK whose telephone number is (571)270-7313. The examiner can normally be reached on M-F: 9:00am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached on (571)272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONITA KHLOK/ Examiner, Art Unit 3761
/HELENA KOSANOVIC/Supervisory Patent Examiner,
Art Unit 3761