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 .
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 “control panel” of line 24 of claim 1, the “first control panel” of line 25 of claim 1, and the “second control panel” of line 25 of claim 1 must each 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 limitation(s) is/are:
“a first processing part” (noting that the term “first processing” is a function, the claim recites a part which performs the function of “first processing”, but recites no additional structure sufficient to perform the function of first processing”) in claim 1;
“the first processing part” in claims 2, 3, 5, and 6;
“a second processing part” (noting that the term “second processing” is a function, the claim recites a part which performs the function of “second processing”, but recites no additional structure sufficient to perform the function of second processing”) in claim 1; and
“the second processing part” in claims 2, 3, 5, and 6.
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 Objections
Claim 1 is objected to because of the following informalities: On line 15 of the claim, “the” should be inserted before “one side of the first table”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 17 of the claim, “the” should be inserted before “one side of the second table”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Line 16 of claim 1 states, “a plurality of tools”. This limitation is viewed to be vague and indefinite, because it is unclear if “a plurality of tools” of line 16 is the same element as the previously set forth “a plurality of tools” of line 8 of claim 1, or if “a plurality of tools” of line 16 is a different element than the previously set forth “a plurality of tools” of line 8 of claim 1, or if instead “a plurality of tools” of line 16 is a subset of tools, for example, as the previously set forth “a plurality of tools” of line 8 of claim 1.
Line 18 of claim 1 states, “a plurality of tools”. This limitation is viewed to be vague and indefinite, as it is unclear if “a plurality of tools” of line 18 is the same element as the previously set forth “a plurality of tools” of line 8 of claim 1 and the previously set forth “a plurality of tools” of line 16 of claim 1, or if “a plurality of tools” of line 18 is a different element than each of the previously set forth “a plurality of tools” of line 8 of claim 1 and the previously set forth “a plurality of tools” of line 16 of claim 1, or if instead “a plurality of tools” of line 18 is a subset of tools of one or both of, for example, the previously set forth “a plurality of tools” of line 8 of claim 1 and the previously set forth “a plurality of tools” of line 16 of claim 1.
Line 23 of claim 1 states, “the first drive part and the second drive part are composed of servomotors.” This limitation is viewed to be vague and indefinite, because as written, it is unclear if “the first drive part” and “the second drive part” are each composed of a respective singular servomotor, or if instead “the first drive part” and “the second drive part” are each composed of respective plural servomotors.
Lines 23-26 of claim 1 state, “the first drive part and the second drive part are composed of servomotors controlled by a control panel in a control box, and wherein a first control panel and a second control panel are provided separately in a control box.” This limitation is viewed to be vague and indefinite, because as written, it is unclear as to how many control boxes the multi-axis machining center comprises, and it is further unclear as to what is contained in the control box or the control boxes of said multi-axis machining center. Does the machining center comprise the “control panel” of line 24 of claim 1 in one control box, and both the “first control panel” and the “second control panel” of line 25 of claim 1 in a different control box? Or are, for example, the “control box” of line 24 and the “control box” of line 26 of claim 1 the same control box? If so, are all of the “control panel” of line 24, the “first control panel” of line 25, and the “second control panel” of line 25 provided/contained in the same singular control box?
Lines 23-30 of claim 1 state, “the first drive part and the second drive part are composed of servomotors controlled by a control panel in a control box, and wherein a first control panel and a second control panel are provided separately in a control box, the first control panel is configured to control the first table, the first drive part and the first tool changer, and the second control panel is configured to control the second table, the second drive part and the second tool changer.” This limitation is viewed to be vague and indefinite, because it is unclear if Applicant is setting forth that the “servomotors” of the “first drive part” are controlled by “a control panel” of line 24 but the “first drive part” itself is controlled by “the first control panel.” If so, does, for example “the first control panel” control the “first drive part” with the exception of the “servomotors” thereof? This limitation is further viewed to be vague and indefinite, because it is unclear if Applicant is setting forth that the “servomotors” of the “second drive part” are controlled by “a control panel” of line 24 but the “second drive part” itself is controlled by “the second control panel.” If so, does, for example “the second control panel” control the “second drive part” with the exception of the “servomotors” thereof?
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 1-8 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Lines 23-26 of claim 1 state, “the first drive part and the second drive part are composed of servomotors controlled by a control panel in a control box, and wherein a first control panel and a second control panel are provided separately in a control box, the first control panel is configured to control the first table, the first drive part and the first tool changer, and the second control panel is configured to control the second table, the second drive part and the second tool changer.” This limitation fails to comply with the written description requirement.
As will be explained below with respect to each of the drawings and the specification, disclosure is not provided by Applicant on “servomotors” of the “first drive part” being controlled by “a control panel in a control box” and the same “first drive part” being controlled by “a first control panel…in a control box.” That is to say that disclosure is not provided by Applicant on the “first drive part” being controlled the “first control panel” of line 25 and the servomotors of this same “first drive part” being controlled by the “control panel” of line 24.
As will be explained below with respect to each of the drawings and the specification, disclosure is not provided by Applicant on “servomotors” of the “second drive part” being controlled by “a control panel in a control box” and the same “second drive part” being controlled by “a second control panel…in a control box.” That is to say that disclosure is not provided by Applicant on the “second drive part” being controlled the “second control panel” of line 25 and the servomotors of this same “second drive part” being controlled by the “control panel” of line 24.
With respect to the drawings filed on 2/23/2023 and on 12/17/2025, none of the “control panel”, the “first control panel”, and the “second control panel” are shown. In other words, none of the three claimed control panels of claim 1 are shown in the drawings filed on 2/23/2023 and on 12/17/2025. Based on the foregoing, the drawings filed by Applicant do not provide disclosure for, “the first drive part and the second drive part are composed of servomotors controlled by a control panel in a control box, and wherein a first control panel and a second control panel are provided separately in a control box.”
Next, Examiner directs attention to the following excerpt from the specification filed on 2/9/2023, wherein the following excerpt bridges pages 9 and 10 of said specification.
The first drive part 51a and the second drive part 52b may be composed of servomotors controlled by a control panel in a control box C. A first control panel and a second control panel are provided separately in the control box C.
In this regard, the first control panel controls the first table 21, the first drive part 71 and the first tool changer 51. The second control panel controls the second table 22, the second drive part 72 and the second tool changer 52.
As can be seen in the above disclosure, Applicant describes a first drive part (51a) and a second drive part (52b) as it pertains to those drive parts (51a, 51b) composed of servomotors controlled by a control panel in a control box (C) in the above excerpt. Then, Applicant describes a first drive part (71) being controlled by the first control panel and further describes a second drive part (72) being controlled by the second control panel in the above excerpt.
Please note the difference in reference characters 51a and then 71 in the above disclosure in reference to the first drive part. That is to say, reference character 51a is described as the first drive part (51a) composed of servomotors controlled by a control panel in a control box (C), and reference character 71 is described in the specification as the first drive part (71) controlled by the first control panel. As can be seen above, Applicant is seemingly referring to two different first drive parts, first drive part 51a and first drive part 71. In doing so, Applicant is disclosing that servomotors of first drive part 51a are controlled by a control panel in a control box (C), and then discloses that different (emphasis added) first drive part 71 is controlled by a first control panel in the control box (C). This is contrast to what is being claimed with “servomotors” of the “first drive part” being controlled by “a control panel in a control box” and the same (emphasis added) “first drive part” being controlled by “a first control panel…in a control box.”
Please also note the difference in reference characters 52b and then 72 in the above disclosure in reference to the second drive part. That is to say, reference character 52b is described as the second drive part (52b) composed of servomotors controlled by a control panel in a control box (C), and reference character 72 is described in the specification as the second drive part (72) controlled by the second control panel. As can be seen above in the provided excerpt of the specification that bridges pages 9 and 10, Applicant is seemingly referring to two different second drive parts, second drive part 52b and second drive part 72. In doing so, Applicant is disclosing that servomotors of second drive part 52b are controlled by a control panel in a control box (C), and then is disclosing that different (emphasis added) second drive part 72 is controlled by a second control panel in the control box (C). This is contrast to what is being claimed with “servomotors” of the “second drive part” being controlled by “a control panel in a control box” and the same (emphasis added) “second drive part” being controlled by “a second control panel…in a control box.”
Thus, the specification does not provide disclosure for, “the first drive part and the second drive part are composed of servomotors controlled by a control panel in a control box, and wherein a first control panel and a second control panel are provided separately in a control box.”
Based on the foregoing, it has not been demonstrated that the Applicant has made an invention that achieves the claimed functions because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Response to Arguments
Applicant's arguments filed 12/17/2025 with respect to the drawings have been fully considered but they are not persuasive.
With respect to the drawings filed on 12/17/2025, Applicant argues the following:
Drawings were objected to as allegedly not showing every feature of the invention specified in claim 11. Claim 11 has been canceled without prejudice to or disclaimer of the subject matter thereof. Regarding the drawing objection to claim 11, the first control panel and the second control panel are provided inside the control box (C). Accordingly, these features are omitted in drawings 3-5. Thus, withdrawal of the foregoing objection is respectfully requested.
Applicant’s arguments have been considered but are not persuasive. Please be advised that although claim 11 has been canceled, Applicant’s arguments concerning the drawings still apply, as “the first control panel” and “the second control panel” are now recited in claim 1 as amended on 12/17/2025. Noting this, just because the first control panel and the second control panel are provided inside the control box (C) doesn’t mean that Applicant doesn’t have to show either of the first control panel and the second control panel. This because the drawings must show every feature of the invention specified in the claims (see MPEP section 1.83(a) “Content of drawing”). Since not every feature is shown, noting that none of the “control panel” of line 24 of claim 1, the “first control panel” of line 25 of claim 1, and the “second control panel” of line 25 of claim 1 are shown in the drawings filed on 2/9/2023 and on 12/17/2025, the drawings being objected to under 37 CFR 1.83(a) is proper. Based on the foregoing, Applicant’s arguments are not persuasive.
Applicant’s arguments submitted on 12/17/2025 with respect to the prior art have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Please be advised that all of the rejections of the current rejection are made under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph or under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Since all of these rejections are being made in response to the amendments filed on 12/17/2025, none of Applicant’s arguments concerning the prior art submitted on 12/17/2025 apply.
Examiner’s Comment
A thorough search has been conducted re: the invention/claims. That being said, though no art rejections are considered to presently apply to claims 1-8. Examiner notes that no indication regarding the allowability of the subject matter of claims 1-8 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, particularly given that it is unclear what changes to the claims might be necessary to overcome the above-described issue(s) with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
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