DETAILED ACTION1
CLAIM OBJECTIONS
Claims 1-3 and 5-7 are objected to because of an informality. Claim 1 recites when number of the first holders in holders as holding targets is larger than number of the second holders in the holders as the holding targets. Grammatically, claim 1 requires the word ‘a’ prior to both instances of the word number. Claims 2-3 contain the same issue. Claims 5-7 are objected to based on their dependency.
Appropriate correction is required.
REJECTIONS UNDER 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 1-9 are rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 recites when number of the first holders in holders as holding targets. This phrase does not make sense as presented and may be a mistranslation of the original claim. As best understood, claim 1 is trying to recite that there are more first holders than second holders in the tools rest. It is unclear what the phase in holders as holding targets is intended to convey, or indeed what the holding targets are. Claims 2-4 contain the same language, in slightly varied form, and are rejected for the same reasons. Claims 5-9 are rejected based on their dependency.
CLAIM INTERPRETATIONS UNDER 112(f)
The MPEP lays out a three part test for determining if 112(f) should be invoked. See MPEP 2181. (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. While the 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.
The claims contain numerous features that trigger 112f. Claim 1 recites a machining control unit configured to control a tool attached to the tool rest to machine a workpiece in accordance with a machining program. The term unit is a nonce term and there are no associated structures recited. The specification teaches that the unit is a processor. Claim 1 a tool changing unit configured to change holding positions of a plurality of tools between holders of the tool rest. Again the term unit is a nonce term and no structures, only functions, are recited. Paragraphs [0038]-[0041] teach the various structures of the tool changing unit. Based on a review of these paragraphs examiner concludes that a moving holding member attached to some form of rail system constitutes the minimum elements of the tool changing unit. Finally, claim 1 recites a tool management unit configured to identify an unused tool in the tools held by the tool rest. This is also a means-plus-function limitation. The specification teaches this is a processor or software system that tracks tool use. These interpretations apply to claims 2-4 as well.
Claim 6 recites a tool storage unit capable of storing a plurality of tools therein. This is also a means-plus-function limitation. The specification teaches a tool magazine. Claim 8 recites the same feature.
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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(a) 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2000 218459 to Keiichi in view of Applicant Admitted Prior Art (AAPA) or alternately AAPA in view of Keiichi.
Claim 1 recites a machine tool. Keiichi teaches such known machine tools. See Keiichi [0001].3 Keiichi teaches a machining control unit (1) configured to control a tool attached to [a] tool rest to machine a workpiece in accordance with a machining program. See Keiichi [0014]-[0015]. Keiichi further teaches a tool changing unit (6) configured to change holding positions of a plurality of tools between holders of the tool rest. See Keiichi [0015]-[0019]. Keiichi also teaches a tool management unit configured to identify an unused tool in the tools held by the tool rest. See Keiichi [0020]-[0021].
Keiichi does not explicitly teach that its tool has a tool rest including a first holder configured to hold a tool for cutting an inner-diameter side portion of a workpiece and a second holder configured to hold a tool for cutting an outer-diameter side portion of a workpiece. Rather, it appears to be generically a system for changing tools regardless of the configuration and location of the tools. But AAPA teaches that tools having this configuration were known. Paragraphs [0008]-[0009] of applicant’s published specification describe a tool having these recited features. Paragraphs [0008]-[0009] are treated as describing a prior art system in that these appear under the heading “Related Art List” and prior to the “Summary of Invention.” If this tool and arrangement is a new arrangement invented by applicant, they may rebut the presumption that [0008]-[0009] are admitted prior art by affirmatively asserting the described tool configuration was not known in the prior art. It will not be sufficient to merely assert that no admission was intended. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious modify Keiichi to control the known tool of AAPA.
Alternately, AAPA teaches the existing of a machine tool [having] a tool rest including a first holder configured to hold a tool for cutting an inner-diameter side portion of a workpiece and a second holder configured to hold a tool for cutting an outer-diameter side portion of a workpiece. AAPA does not explicitly teach the various control units. But Keiichi teaches such systems were known in the relevant tool field and it would have been obvious to modify AAPA to use the machining control unit, tool changing unit, and tool management unit of Keiichi for their intended purposes. See MPEP 2143(D).
Claim 1 then recites in a case where a plurality of tools of a same type are held by both the first and second holders, [and there are more]… first holders [than]…second holders… and one of the tools held by the second holders is identified as the unused tool, the tool changing unit changes the unused tool in the second holder with the tool in the first holder. This entire feature is an intended use of the tool changing unit. Since claim 1 does not explicitly recite that the tool changing unit is ‘configured’ to perform this step, the claim feature would be anticipated by any tool changing device that can change any tools to and from any location, since it would be capable of the intended change (via several steps). Additionally, the phrase in a case presents this entire feature as an optional step that may, or may not occur. Claim 1 does not affirmatively recite that the tool actually has more first holders than second holders. It merely recites an intended action if, and when, this situation might occur. This feature therefore need not be taught by the prior art since it might not occur or exist in a potential infringing product.
Applicant is advised to amend claim 1 to explicitly recite the specific number of tools and tool holders in the specific embodiment of its tool and then recite that the tool changing unit is configured to perform the recited method step.
Claim 2 recites substantially identical features to claim 1. These are rejected for the same reasons. Claim 2 differs in that it recites a slightly different optional situation regarding the number of tools in the various holders. Since this feature is still optional, it remains taught.
Claim 3 recites a slightly broader variant of claim 1. It recites a first holder configured to allow a shank portion of a tool to be inserted thereinto in a first direction to hold the tool and a second holder configured to allow a shank portion of a tool to be inserted thereinto in a second direction. This is merely a broader version of the specific embodiment of claim 1, and is therefore also taught for the same reasons. Claim 3 recites a slightly different optional situation, but again this feature need not be taught. Claim 4 recites an even broader version of the structures of the tool, merely reciting a turning holder configured to fix a tool to allow the tool to perform turning and a rotary holder configured to fix a tool to allow the tool to perform rotary machining. This is also taught by AAPA. Claim 4 then recites another optional feature that need not be shown by the prior art. Claim 5 recites that the two directions are radial and axial. AAPA admits such tools exist.
Claim 6 recites a tool storage unit capable of storing a plurality of tools. Keiichi teaches a tool magazine (7) that meets this limitation. Claim 6 then recites when a tool of a same type as the tools held by both the first and second holders is stored in the tool storage unit as a usable tool, the tool changing unit changes the unused tool held by the first or second holder with the usable tool in the tool storage unit. As with earlier claims, the phrase when makes this feature optional and the prior art need not show it.
Claim 7 recites that the tool changing unit performs tool change between the tool in the first holder and the tool in the second holder under a condition that the usable tool is not stored in the tool storage unit. This constitutes an intended use of the tool changing unit. The choice of where to obtain a usable tool does not alter the structure of a tool changing unit. The movable tool holder that moves a tool from one location to the machining location can obtain the tool from multiple locations, with a programming change. As such, this limitation is not deemed to further limit the claim. Applicant is advised to amend the claim to recite that the tool changing is ‘configured’ to perform this step. Claims 8-9 recite the same features as claims 6-7 and are rejected for the same reasons.
OTHER ART
JP S5627754A to Yoshirou is deemed to be relevant to the instant claim set, particularly reciting both tool holders having the recited structural features and a tool changing systems.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh 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. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
3 All citations are to the English language translation provided by applicant in the December 26, 2022 IDS.
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