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 .
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:
“a tool transfer device which transfers the tool between the first tool storage magazine and the second tool storage magazine” in claim 1;
“a moving mechanism configured to move in a radial direction” in claim 6; and
“the moving mechanism” in claim 7 (noting that the term “moving” is a function such that claim 7 recites a mechanism for performing the function of moving, but recites no additional structure to perform the function of moving).
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 § 102/103
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.
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.
Claims 1, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martin (CH 699221 A2), or in the alternative, are rejected under 35 U.S.C. 103 as being unpatentable over Martin (CH 699221 A2) in view of Kitamura (U.S. Pat. No. 4,546,532 A).
Please be advised that Martin was previously cited by Examiner on the PTO-892 that mailed on 1/16/2025. Please also be advised that an EPO Machine Translation of Martin is relied upon below. This EPO Machine Translation was Martin was previously provided with the office action that mailed on 11/6/2025.
Claim 1: Figure 1 of Martin shows therein a machine tool comprising a milling machine (1) [EPO Machine Translation, paragraph 0012], and further comprising a tool changer for performing tool changes, the tool changer comprising a first tool storage magazine (9) and a second tool storage magazine (4).
With regards to the milling machine (1), it inherently comprises a spindle. Noting that milling machines utilize a rotating cutting tool that is brought into contact with a workpiece for removing material from said workpiece, if the milling machine (1) of Martin didn’t comprise a spindle, then the milling machine (1) of Martin would not have the means necessary for setting a given tool, e.g. tool (5), into rotation for carrying out (milling) machining of the workpiece. Thus, via the milling machine (1) thereof, the machine tool of Martin inherently comprises a spindle.
However, should it be held that the milling machine (1) of Martin does not inherently comprise a spindle, then Examiner directs attention to Kitamura. Figures 1-2 of Kitamura show therein a milling machine that comprises a spindle (5) that is rotatably mounted on a head (4) [Kitamura, column 2, lines 53-54]. As a result, a given tool (T) that is mounted to the spindle (5) from a tool magazine (6) of the milling machine is able to be set into rotation by the spindle (5) for machining of a workpiece.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the milling machine (1) of Martin with the head (4) and rotatable spindle (5) of Kitamura, so as to provide the milling machine (1) of Martin with the advantage of being able to set a tool (that was received from the tool changer of Martin) into rotation for carrying out (milling) machining of the workpiece. Thus, via the milling machine (1) thereof, the machine tool of Martin comprises a spindle.
With regards to the first tool storage magazine (9), it is configured to store a tool (5) in a receptacle (16) thereof mounted onto the spindle of the machine tool. (Be advised that as was explained above by Examiner, the machine tool of Martin either inherently comprises the spindle, or the modified machine tool of Martin comprises the spindle (5) of Kitamura). Noting this, the first tool storage magazine (9) of Martin, by virtue of the receptacle (16) thereof, is configured to store a tool, e.g. tool (5), that is, for example, either to be mounted to the spindle of the machine tool or a tool, e.g. tool (5), previously mounted onto the spindle of the machine tool.
Regarding the second tool storage magazine (4), it is configured to store the tool (5) stored by the first tool storage magazine (9), the second tool storage magazine (4) being rotatable about an axis inclined with respect to a horizontal plane.
For Applicant’s reference, Examiner has annotated Figure 1 of Martin (please see below) and has shown a horizontal plane and an approximate location of the inclined axis about which the second tool storage magazine (4) rotates.
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Next, please be advised that lines 8-9 of claim 1 set forth therein, “a tool transfer device which transfers the tool between the first tool storage magazine and the second tool storage device.” Noting this, “a tool transfer device” is 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 of deburring and the generic placeholder is not preceded by a structural modifier. Please be advised that “a tool transfer device” is interpreted as comprising the structure that is disclosed in paragraph [0061] of Applicant’s specification filed on 5/16/2022, as well as equivalents thereto.
Regarding the prior art, Martin shows in Figures 1-3 a transfer combination (10, 11), which comprises a robot (10) and an auxiliary gripper (11). In use, the transfer combination (10, 11) of Martin functions to transfer the tool (5) between the first tool storage magazine (9) and the second tool storage magazine (4) [EPO Machine Translation, paragraph 0013]. As such, the transfer combination (10, 11) of Martin is an equivalent of the “tool transfer device” of lines 8-9 claim 1.
This is because the transfer combination (10, 11) carries out the function specified in lines 8-9 of claim 1, the function being, “transfers the tool between the first tool storage magazine and the second tool storage device.” The transfer combination (10, 11) of Martin is also not excluded by any explicit definition provided in Applicant’s specification, and said transfer combination (10, 11) produces substantially the same result as the corresponding “tool transfer device (9)” of Applicant. Based on the foregoing, the transfer combination (10, 11) of Martin will hereinafter be referred by Examiner as “the tool transfer device (10, 11).”
Also, a center of gravity of the second tool storage magazine (4) is disposed below each of a tool change position of the first tool storage magazine (9) and a tool change position of the second tool storage magazine (4). For Applicant’s reference, Figure 1 of Martin has again been annotated. In doing so, the approximate location of the center of gravity and the approximate location of the tool change position of the second tool storage magazine (9) have been pointed to. Please see the following page for version 2 of annotated Figure 1 of Martin.
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Claim 6: With regards to the tool transfer device (10, 11), it comprises each of the robot (10) and the auxiliary gripper (11). Noting this, please be advised that line 3 of claim 6 sets forth therein, “a moving mechanism configured to move in a radial direction.” Please note that “a moving mechanism” is 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 of deburring and the generic placeholder is not preceded by a structural modifier. Please be advised that “a moving mechanism” is interpreted as comprising the structure that is disclosed in paragraph [0061] of Applicant’s specification filed on 5/16/2022, as well as equivalents thereto.
With regards to the prior art and Martin, the auxiliary gripper (11) is disclosed by Martin as being a pneumatically drive slide [EPO Machine Translation, paragraph 0013]. Noting this, a rod of the auxiliary gripper (11)/pneumatic drive slide, which can be seen in Figure 3 of Martin, is an element that is configured to move radially, with respect to, for example, an axis extending orthogonal to a longitudinal axis of said rod. As such, the rod of the auxiliary gripper (11) is an
equivalent of the “moving mechanism” of line 3 of claim 6. This is because the rod carries out the function specified in line 3 of claim 6, the function being, “move in a radial direction.” Also, the rod is not excluded by any explicit definition provided in Applicant’s specification, and said rod produces substantially the same result as the corresponding “moving mechanism” of Applicant. Thus, the rod of the auxiliary gripper (11)/pneumatic drive slide of Martin will hereinafter be referred to by Examiner as “the moving mechanism.” For Applicant’s reference, the moving mechanism has been pointed to below in annotated Figure 3 of Martin.
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Lastly, as can be seen above within annotated Figure 3 of Martin, the tool transfer device (10, 11) further includes a pot, the pot provided in the moving mechanism and configured to grip the tool (5).
Claim 7: As can be seen below in annotated Figure 1 of Martin, the moving mechanism is positioned, for example, on an upper side of a central axis of a support disk of the second tool storage magazine (4).
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Claim Rejections - 35 USC § 103
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Martin (CH 699221 A2) in view of Korea Pub. No. KR 20120071613 A (hereinafter KR '613), or in the alternative, as being unpatentable over Martin (CH 699221 A2) in view of Kitamura (U.S. Pat. No. 4,546,532 A) and further in view of Korea Pub. No. KR 20120071613 A (hereinafter KR '613).
Please be advised that KR '613 was previously cited by Examiner on the PTO-892 that mailed on 11/6/2025. Please also be advised that an EPO Machine Translation of KR '613 is relied upon below. This EPO Machine Translation of KR '613 was previously provided with the office action that mailed on 11/6/2025.
Claim 4: As can be seen in Figures 1 and 3 of Martin, the second tool storage magazine (4) includes a support disk.
Martin though, does not provide disclosure on the second tool storage magazine (4) further comprising, “an arm provided in a peripheral edge portion of the support disk and configured to grip the tool, one end portion of the arm protruding outward in a radial direction of the support disk from the peripheral edge portion, and an opposite end portion of the arm being disposed at a position facing away from a center of the support disk.” Please be advised that the tool transfer device (10, 11) of Martin includes the robot (10) and the auxiliary gripper (11) (see Figures 1 and 3), the latter of which is embodied as a pneumatically driven slide that removes the tool (5) from the second tool storage magazine (4) [EPO Machine Translation, paragraph 0013].
Figure 1a of KR '613 though, shows a tool storage magazine (110) and an arm (111). Regarding the arm (111), it is provided in a peripheral edge portion of the support disk and is configured to grip a tool (T1). Please be advised that one end portion of the arm (111) protrudes outward in a radial direction of the support disk from the peripheral edge portion, and an opposite end portion of the arm (11) is disposed at a position facing away from a center of the support disk. For Applicant’s reference, the approximate location of the center of the support disk has been shown below in annotated Figure 1a of KR '613. Also, two exemplary options of the one end portion and two exemplary options of the opposite end portion have also been pointed to below by Examiner. It is noted that the dashed lines shown in the annotated figure demonstrate how each opposite end portion is at a position that is “facing away” from the center of the support disk.
Moreover, be advised that a driven slide (120) is provided that removes the tool (T1) from a selected arm (111) of the tool storage magazine (110) (see Figures 1a, 1b, and 2).
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the tool storage magazine (110) and the driven slide (120) of KR '613 for the second tool storage magazine (4) and the auxiliary gripper (11) of Martin, as this is substitution of one known support disk tool magazine for another and one known driven slide for removing a tool from a support disk tool magazine for another, in order to obtain the predictable result of the tool storage magazine (110) being mounted such that when a given tool stored therein is required at the first tool storage magazine (9) of Martin, the driven slide (120) acts to remove the given tool from the corresponding arm (111) of the tool storage magazine (110) and to pass the given tool to the robot (10) of the modified tool transfer device (10, 120) such that the given tool is provided to the first tool storage magazine (9).
In making this substitution, it is noted that the tool storage magazine (110) of KR '613 assumes the position and orientation of the now substituted-out second tool storage magazine (4) of Martin. Thus, the tool storage magazine (110) of KR '613 is the “second tool storage magazine” of the modified tool changer of Martin, and is mounted in an orientation such that it (110) is rotatable about the axis inclined with respect to the horizontal plane. Lastly, it is noted that the modified tool transfer device (10, 120) of Martin comprises the robot (10) of Martin and driven slide (120) of KR '613, because the driven slide (120) of KR '613 was substituted (please see above) for the auxiliary gripper (11) of Martin.
Claim 5: As can be seen below in annotated Figure 1a of KR '613, the arm (111) includes a support plate that is fixed to the (second) tool storage magazine (110), and further includes two support rods. Whereas a first one of the two support rods is configured to rotate on a left side of the support plate, a second one of the two support rods is configured to rotate on a right side of the support plate. (It is reiterated that in the rejection of claim 4 that in modifying Martin in view of KR '613, the tool storage magazine (110) of KR '613 assumed the position and orientation of the now substituted-out second tool storage magazine (4) of Martin. Thus, the tool storage magazine (110) of KR '613 is the “second tool storage magazine” of the modified tool changer of Martin,
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Lastly, as can be seen below in annotated Figure 1b, the first one of the two support rods has a first part (A) extending in a direction orthogonal to a center axis of the support disk of the second tool storage magazine (110), a first inclined portion extending toward one direction parallel to the center axis of the support disk from one end portion of the first part (A), and a first grip portion (113) provided on another end portion of the first part (A) that is opposite the one end portion of the first part (A), the first grip portion (113) being configured to grip the tool. Please be advised that as a 3D object, the first inclined part extends in any number of directions including extending at an at angle toward one direction that is parallel to the center axis of the support disk. Likewise, as a 3D object, the first part (A) extends in any number of directions including in a horizontal direction (from the perspective of Figure 1b of KR '613, for example) orthogonal to the center axis of the support disk of the (second) tool storage magazine (110).
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Response to Arguments
Applicant's arguments filed 2/6/2026 have been fully considered but they are not persuasive.
With respect to claim 1 and Martin, Applicant argues the following:
Martin contains no description regarding a "spindle" at all, nor is a "spindle" shown in the drawings. Martin merely describes that the tool holding ring (9) has a receiving portion (16) for receiving a tool (5). That is, the tool holding ring (9) of Martin is not a tool magazine configured to store a tool mounted on a spindle, and thus does not correspond to the "first tool storage magazine" of claim 1. KR '613 fails to make up for this deficiency. Thus, claim 1 is patentable over Martin and KR '613. Claims 4-7 are patentable for at least the same reason, and for the additional features they recite. Applicant respectfully requests withdrawal of the rejections.
Applicant’s argument has been considered, but is not persuasive.
While Martin does not discuss a spindle, Martin does provide disclosure upon the machine tool as comprising a milling machine (1) [EPO Machine Translation, paragraph 0012]. Regarding the milling machine (1), it inherently comprises a spindle. Noting, for example, that milling machines utilize a rotating cutting tool that is brought into contact with a workpiece for removing material from said workpiece, if the milling machine (1) of Martin didn’t comprise a spindle, then the milling machine (1) of Martin would not have the means necessary for setting a given tool into rotation for carrying out (milling) machining of the workpiece. Thus, by way of the milling machine (1) thereof, the machine tool of Martin inherently comprises a spindle.
However, should it be held that the milling machine (1) of Martin does not inherently comprise a spindle, then Examiner directs attention to Kitamura (U.S. Pat. No. 4,546,532 A).
Figures 1-2 of Kitamura show therein a milling machine that comprises a spindle (5) that is rotatably mounted on a head (4) [Kitamura, column 2, lines 53-54]. As a result, a given tool (T) that is mounted to the spindle (5) from a tool magazine (6) of the milling machine is able to be set into rotation by the spindle (5) for machining of a workpiece.
Noting the above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the milling machine (1) of Martin with the head (4) and rotatable spindle (5) of Kitamura, so as to provide the milling machine (1) of Martin with the advantage of being able to set a tool (that was received from the tool changer of Martin) into rotation for carrying out (milling) machining of the workpiece. Thus, via the milling machine (1) thereof, the machine tool of Martin comprises a spindle.
Based on the foregoing, the machine tool of Martin either inherently comprises the spindle via the milling machine (1) thereof, or if it is held that the milling machine (1) of Martin does not inherently comprise a spindle, the modified machine tool of Martin comprises the spindle (5) of Kitamura. In each instance, “A machine tool comprising a spindle” is satisfied.
With regards to the first tool storage magazine (9), it is configured to store a tool (5) in a receptacle (16) thereof mounted onto the spindle of the machine tool. (Be advised that as was explained above by Examiner, the machine tool of Martin either inherently comprises the spindle, or the modified machine tool of Martin comprises the spindle (5) of Kitamura). Noting this, the first tool storage magazine (9) of Martin, by virtue of the receptacle (16) thereof, is configured to store a tool, e.g. tool (5), that is, for example, either to be mounted to the spindle of the machine tool or a tool, e.g. tool (5), previously mounted onto the spindle of the machine tool. As such, in contrast to Applicant’s argument, the first tool storage magazine (9) of Martin does indeed correspond to the “first tool storage magazine” of claim 1.
Based on the foregoing, Applicant’s argument is not deemed to be persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Vitale whose telephone number is (571)270-5098. The examiner can normally be reached Monday - Friday 8:30 AM- 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722