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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/06/2026 has been entered.
The status of the 07/15/2026 claims, is as follows: Claims 1, 6, and 10 have been amended; and Claims 1-10 are pending.
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 “the guide arm supporting the electrode guide.” in line 3 of claim 6 must be shown or the feature(s) canceled from the claim(s).
It appears from fig. 5 that the guide arm 115 is separated from the electrode guide 120 by the channel 150 or gap. In other words, the guide arm 115 do not physically contact the electrode guide 120, so how can the guide arm 115 structurally supports the electrode guide 120.
Therefore, the limitation is not shown in the figures.
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 9:
The limitation “a rotating tube system” in line 2
“system” is the generic placeholder.
“rotating” 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.
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.
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 6-7 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 "the guide arm supporting the electrode guide." In line 3 renders the claim indefinite because it is unclear how can the guide arm structurally supports the electrode guide according to plain meaning of the word “support” since they do not physically contact each other. According to Vocabulary, https://www.vocabulary.com/dictionary/support, “support” is interpreted to mean “be the physical support of; carry the weight of”.
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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. There is a channel between the guide arm 115 and the electrode guide 120. It is unclear how can the guide arm 115 structurally 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 “the guide arm thermally contacts the electrode guide."
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 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki (US 20140144884)
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Regarding Claim 1, Suzuki discloses an electrical discharge machining system (small-hole electrical discharge machining device 1; figs. 1 and 8-9) for drilling a hole in a workpiece using a flushing fluid (flushing working fluid) (abstract and para. 0001), comprising:
an electrode (electrode 11) (para. 0063);
the electrode positioned in an electrode guide (electrode guide 13A; figs. 8-9) (para. 0088); and
an integrated external flushing system (fluid distribution chamber; fig. 9);
the integrated external flushing system comprising a guide cap (head cover 17c) and a concentric flushing channel (fluid jet opening 9a) defined between the guide cap (head cover 17c) and the electrode guide (electrode guide 13A) so as to allow the flushing fluid (fluid) to remain attached to the electrode guide (electrode guide 13A) (para. 0088);
wherein the concentric flushing channel (fluid jet opening 9a) separates the electrode (electrode 11) from the flushing fluid (fluid) (it is noted the fluid and electrode 11 are separated by electrode guide 13A) (fig. 9); and
wherein the guide cap (head cover 17c) is positioned at a distal end of the electrode guide (electrode guide 13A) proximate to the workpiece (para. 0090; fig. 8).
Regarding Claim 2, Suzuki discloses the electrical discharge machining system (small-hole electrical discharge machining device 1; figs. 1 and 8-9), wherein the integrated external flushing system (fluid distribution chamber; fig. 9) comprises a flushing fluid source (fluid tank) in communication with the concentric flushing channel (fluid jet opening 9a) (para. 0026).
Regarding Claim 5, Suzuki discloses the electrode guide (electrode guide 13A) accommodates a plurality of differently sized electrodes (it is noted the electrode guide 13A is capable of accommodating electrodes of different sizes).
Regarding Claim 6, Suzuki discloses the electrical discharge machining system further comprising a guide arm (annotated fig. 8) positioned at a proximal end of the electrode guide (electrode guide 13A) opposite the guide cap (head cover 17c), the guide arm supporting the electrode guide (electrode guide 13A) (para. 0088).
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Regarding Claim 7, Suzuki discloses the electrical discharge machining system, wherein the concentric flushing channel (fluid jet opening 9a) extends between the electrode guide (electrode guide 13A) and the guide arm in part (annotated fig. 8).
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Regarding Claim 8, Suzuki discloses the electrical discharge machining system, further comprising a piston (driving measure) in communication with the electrode (electrode 11) (“head section 25 comprises a driving measure which moves the lifting table 7 in the Z direction”, para. 0060).
Regarding Claim 9, Suzuki discloses the electrical discharge machining system, further comprising a rotating tube system (rotating shaft 8) in communication with the piston (driving measure) (para. 0058) (fig. 1. It is noted the shaft 8 is configured to rotate the electrode 11 and the driving measure is configured to move the electrode 11 in the Z direction. The shaft 8 is operationally connected to the driving measure under the control of the controller).
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 Suzuki (US 20140144884) in view of Lamphere (US 20050247569)
Regarding Claim 3, Suzuki does not disclose 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 Suzuki 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, the modification does not disclose the internal flushing system is in communication with the flushing fluid source.
However, 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).
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 flushing fluid source (fluid tank of Suzuki) to be in communication with the internal flushing system of Lamphere, in order to supply the fluid to the internal channel in the electrode to help cool the electrode.
Regarding Claim 10, Suzuki discloses a method of reducing debris about an electrode (electrode 11) while drilling a hole in a workpiece (hole in a workpiece) with an electrical discharge machining system (small-hole electrical discharge machining device 1; figs. 1 and 8-9) (para. 0003-0004), comprising:
drilling the hole with the electrode (hole in the workpiece by the electrode 11) (abstract);
flowing flushing fluid through an integrated external flushing system (fluid distribution chamber; fig. 9) separate from the electrode (electrode 11) (it is noted the fluid and electrode 11 are separated by electrode guide 13A) (para. 0088), wherein the integrated external flushing system (fluid distribution chamber) comprises a guide cap (head cover 17c) positioned at a distal end of an electrode guide (electrode guide 13A) proximate to the workpiece (para. 0090; fig. 8); and
continuing to flow flushing fluid (fluid) through the integrated external flushing system (fluid distribution chamber; fig. 9) as the electrode breaks out of the workpiece (para. 0066-0067).
Suzuki does not disclose flowing flushing fluid through an internal flushing chamber within the electrode.
However, Lamphere discloses an electrode (electrode 12; fig. 2) comprises an internal flushing chamber (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 Suzuki to include the internal flushing chamber as taught by Lamphere, in order to help cool the electrode during operation, thereby prolong the lifetime of the electrode.
Response to Amendment
With respect to drawing objection: on p. 05 of the Remarks, the Applicant argues para. 0017 and fig. 5 supports the limitation “the guide arm supporting the electrode guide” of claim 6. The Applicant argument is respectfully not persuasive because as depicted in fig. 5, the guide arm 115 does not physically contact the electrode guide 120, how can the guide arm supports the electrode guide.
With respect to 112b for “the guide arm supporting the electrode guide” of claim 6: on p. 5-6 of the Remarks, Applicant’s argument is respectfully not found persuasive because according to Fig. 5 the guide arm 115 is separated from the electrode guide 120 by a gap (i.e. channel). It is unclear how can the guide arm 115 physically support the electrode guide 120 because the plain meaning of “support” implies that the two elements are in physical contact with each other.
With respect to 112f for “electrical discharge machining system” in line 2 of claim 10: on p. 6 of the Remarks, Applicant’s argument is respectfully not found persuasive because the limitation meets the 3-prong test, therefore the 112f notification is proper. It is suggested to amend to read “electrical discharge machine” to avoid 112f notification.
Response to Arguments
Applicant’s arguments filed on 07/15/2026 have been fully considered but are not respectfully found persuasive because:
Applicant’s argument: on p. 8-9 of the Remarks “Specifically, the Applicant has amended independent claim 1 to recite "wherein the guide cap is positioned at a distal end of the electrode guide proximate to the workpiece." Support for this amendment is found at paragraph [0017] and Figs. 5-8, where the guide cap 125 is shown at the lower end of the electrode guide 120 proximate to the workpiece 25.
As is shown, the integrated external flushing system includes a guide cap 125 that is positioned at the distal end of the electrode guide 120 (i.e., the end proximate to the workpiece), and a concentric flushing channel 150 is defined between the guide cap 125 and the electrode guide 120. This configuration allows the flushing fluid to flow along the electrode guide and into the hole being drilled, providing effective debris removal as the electrode breaks out of the workpiece. See, e.g., paragraph [0020] ("[T]he concentric fluid channel 150 allows the flushing fluid 91 to flow along the electrode guide 120 and into the hole 96.")
In contrast, Suzuki's head cover 17c is not a "guide cap" positioned at a distal end of the
electrode guide proximate to the workpiece as claimed. Rather, the head cover 17c is part of the
housing block that seals the electrode guide 13A in a hermetically sealed condition. See Suzuki,
paragraph [0088] ("A head cover 17c seals the electrode guide 13A and has the high pressure
working fluid jet opening 9a.") The head cover 17c functions to hermetically seal the electrode
guide within the housing block, not to define a concentric flushing channel between itself and the
electrode guide as recited herein.
Indeed, the structural relationship between Suzuki's head cover 17c and electrode guide 13A is fundamentally different from the claimed guide cap and electrode guide. Herein, the guide cap 125 is a distinct structural component positioned at the distal end of the electrode guide 120, with the concentric flushing channel 150 defined in the space between the guide cap 125 and the outer surface of the electrode guide 120. See paragraph [0018] ("[t]he concentric fluid channel 150 may be defined by the electrode guide 120 and the guide arm 115 on one end and the guide cap 125 on the other.") As shown in Fig. 5 above, the flushing fluid 91 flows through this concentric channel 150 between the guide cap 125 and the electrode guide 120,
along the length of the electrode guide 120.
In contrast, as shown in Fig. 9 of Suzuki, the head cover 17c is an integral part of the
housing block assembly that surrounds and hermetically seals the electrode guide 13A - it is not
a separate guide cap component with a concentric channel defined between itself and the
electrode guide.”
Examiner’s response: Applicant’s argument is respectfully not persuasive because it is reasonable to equate the Suzuki’s head cover 17c to the claimed “guide cap”. The head cover 17c is positioned at the distal end of the electrode guide 13A as shown in annotated fig. 9. The head cover 17c defines a channel 9A through which fluid flows between itself and the electrode guide 13A (para. 0088). There is no claim language that preclude Examiner from equating the head cover 17c to the “guide cap”. Structurally, the head cover 17c define the channel 9A between itself and the electrode guide 13A. Moreover, according to fig. 9 the head cover 17c is indicated by a hatch line pattern and the rest of the components associated with the housing block 17A is indicated by another hatch line pattern. Therefore, the head cover 17c indicated by a hatch line pattern and the rest of the components associated with the housing block 17A indicated by another hatch line pattern define the housing block 17A. There is no description in Suzuki that the head cover 17c and the rest of the components associated with the housing block 17A are integral.
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Applicant’s argument: on p. 9 of the Remarks “Moreover, Suzuki's fluid flow path is different from the claimed invention. In Suzuki, the electrode guide 13A has "a plurality of grooves which are straight in a longitudinal direction and are apposed in a circumferential direction as the working fluid passageway on the circumferential surface." Paragraph [0090]. Thus, the fluid in Suzuki flows through grooves formed on the surface of the electrode guide itself, rather than through a concentric flushing channel defined between a guide cap and the electrode guide as in the claimed invention.”
Examiner’s response: Applicant’s argument is respectfully not persuasive because the claim requires the concentric flushing channel defined between the guide cap and the electrode guide. As evident in fig. 9, the channel 9A is concentric and is defined between the guide cap 17c and the electrode guide 13A. The concentric channel 9A allows fluid to flow toward the workpiece.
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Applicant’s argument: on p. 9-10 of the Remarks “Additionally, the location and nature of the fluid exit differs. In Suzuki, the high pressure working fluid jet opening 9a is formed in or through the head cover 17c as part of the sealed housing structure. See Paragraph [0088] ("The high pressure working fluid jet opening 9a is arranged in the vicinity of the 1 ower side of the 1 ower guide piece 13 b concentrically.") Herein, by contrast, the concentric flushing channel 150 itself - defined between the guide cap 125 and the electrode guide 120 - allows the flushing fluid to flow along the length of the electrode guide and exit at the distal end proximate to the workpiece. The guide cap 125 thus defines the boundary of the concentric channel, rather than merely having a jet opening formed through it.
The functional differences are also significant. Herein, "[t]he use of the integrated
external flushing system 140 thus allows the flushing fluid 91 to remaining attached to the
electrode guide 120 and into the hole 96 as the electrode 110 proceeds into the workpiece 25."
Paragraph [0020]. Suzuki's head cover 17c, by contrast, functions primarily to hermetically seal
the electrode guide within the housing block, with the jet opening 9a providing a discrete fluid
exit point - not defining a concentric channel between a guide cap and electrode guide that
allows flushing fluid to remain attached to and flow along the electrode guide.
Because Suzuki does not disclose a guide cap positioned at a distal end of the electrode
guide proximate to the workpiece, with a concentric flushing channel defined between the guide
cap and the electrode guide, Suzuki does not anticipate independent claim 1 as amended.”
Examiner’s response: Applicant’s argument is respectfully not persuasive because the location and nature of the fluid exit is not claimed. The claim merely requires the concentric flushing channel defined between the guide cap and the electrode guide. As seen in annotated fig. 9 of Suzuki, fluid flows within the channel 9A defined by the guide cap 17c and the electrode guide 13A. The guide cap 17c defines the channel 9A and seals the electrode guide 13A (para. 0088). Respectfully, the argument pertaining to the function of the guide cap 17c is not persuasive because according to MPEP 2114, when the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does.” and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. In this case, guide cap 17c defines the channel 9A between itself and the electrode guide 13A.
Conclusion
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, IBRAHIME ABRAHAM can be reached on (571)270-5569. 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
/CHRIS Q LIU/ Primary Examiner, Art Unit 3761
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