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 .
Status of Claims
Claims 1-3, 5, 9, 10, 12, 14 and 15 have been amended, claim 11, has been canceled, new claims 16-21 have been added, claim 13 remain withdrawn, and therefore claims 1-10, 12 and 14-21 are currently under consideration in the application.
Claim Interpretation
3. 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.
4. 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.
Claim 1, as amended, in lines 3-4 recites the limitation “at least two means for applying a radial and/or an axial clamping force……..”.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 have been interpreted to cover the corresponding structure described in the specification that achieves 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(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: said recited means is identified in the specification label (8-1, 8-2, 8-3 or 8-4) and described in the specification para [0014], [0036] as either clamping cylinder or slide shoe.
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 1, 2 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nakaya et al. (US Patent No. 11,465,230)
Regarding claims 1 and 16, Nakaya et al. teaches a workpiece holding device (i.e., machining and joining tool 1, see abstract, figures 1, 2A-2C and column 2, lines 54-60) for holding a workpiece (W1, W2 and W3, see figures 1, 2A-2C & 3, column 2, lines 54-60, column 3, lines 1-5, column 4, line 27-column 5, line 42) in a friction welding system (see column 5, lines 20-25 and figures 1, 2A-2C & 3) during which the workpieces W1 and W2 undergo a reasonable amount of expansion at the abutted joining end due to the heat generated during the friction welding; wherein the workpiece holding device comprising: at least two clamping units or means (5a and 5b,see figures 1, 2A-2C & 3, and column 3, lines 1-5 and lines 40-58) configured to apply a radial and/or an axial clamping force (i.e. because the clamps applies both radial force on the workpieces W1 and W2 by being rotated by the respective spindles (3a and 3b) and axial pressure force on the workpieces at abutted position by being axially movable against each other by the saddles (8a and 8b), see figures 1, 2A-2C & 3, and column 2, line 61-column 3, line 58 and column 4, lines 27-52) to the workpiece to hold the workpiece in the workpiece holding device in a predefined position (see figures 2B, 2C and 3), and adjusting means (i.e., spindles 3a/3b, headstock 4a/4b and saddle 8a/8b assembly, see figures 1, 2A-2C & 3, column 2, lines 61-67, column 3, lines 5-58 and column 4, lines 3-67) for setting the at least two clamping units to synchronously apply a substantially identical radial and/or axial clamping force (see column 4, lines 41-52) to the workpiece (W1, W2 &W3).
Nakaya et al. does not particularly teach means for applying radial and/or axial clamping force to the work piece that is in a form of either a clamping cylinder or a slide shoe as described in the specification as the corresponding structure. However, each of the clamping units (5a and 5b, see figures 1, 2A-2C & 3, and column 3, lines 1-5 and lines 40-58) of Nakaya et al. is structurally connected to a spindle (3a, 3b), saddle (8a and 8b) and guide rails (7a and 7b) ( see column 3, lines 1-58) so as to operably apply a radial and an axial clamping force to the workpiece (W1 and W2) in substantially the same manner as the means in the claimed device, hence the clamping unit disclosed by Nakaya et al. is structurally and functionally equivalent to the instantly-claimed means for applying radial and/or axial clamping for to the work piece. (also see MPEP 2181).
Regarding claim 2, Nakaya et al. does not expressly teach a first one of the plurality of adjusting units being directly driven and all other ones of the plurality of adjusting units being driven by the first one of the adjusting units in the manner as claimed; however Nakaya et al. teaches a workpiece holding device in which the adjusting means comprises a plurality of adjusting units (i.e., spindles 3a/3b, headstock 4a/4b and saddle 8a/8b assembly, see figures 1, 2A-2C & 3, column 2, lines 61-67, column 3, lines 5-58 and column 4, lines 3-67) in which the first set of adjusting means (spindle 3a, headstock 4a and saddle 8a assembly) is driven by a first drive assembly (electric motor 6a and drive source 9a , see figures 1, 2A-2C & 3 and column 4, lines 3-67) and a second set of adjusting means (spindle 3b, headstock 4b and saddle 8b assembly) is driven by a second drive assembly (electric motor 6b and drive source 9b, see figures 1, 2A-2C & 3 and column 4, lines 3-67). Because all the adjusting units of workpiece holding device of Nakaya et al. are at least configured to be driven by a drive means (electric motor 6a/b and drive source 9a/b) so as to apply a radial and/or an axial clamping force to the workpiece in the same manner as the instant claimed device, it therefore reasonably suggests, absent any evidence to the contrary, that the device of Nakaya et al. is functionally equivalent to the instant claimed workpiece holding device.
Allowable Subject Matter
7. Claims 3-10, 12,14, 15, 19-21 are allowed.
8. The following is a statement of reasons for the indication of allowable subject matter: the claims are allowed because claim 3 indicated allowable in the previous office action mailed on 12/16/2025 has been written in an independent form.
9. Claims 17 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
10. The following is a statement of reasons for the indication of allowable subject matter: Nakaya et al. differs from the instant claimed invention by failing to teach and/or adequately suggest as in claim 17: at least at least three rotatable clamping bodies having an axis of rotation and an outer surface in contact with the circumferential outer surface of the workpiece, and wherein the at least three rotatable clamping bodies are mechanically coupled by a belt or a chain or a gear for synchronous rotation while in contact with the workpiece; and other claimed features.
Response to Arguments
11. Applicant's arguments filed 03/16/2026 with respect to claim 1, 2 and 16 have
been fully considered but they are not persuasive.
Applicant argues/submits that claim 1 has been amended to change the limitation "clamping units," which was being interpreted broadly enough to read on the clamping arrangement of Nakaya, to "means for applying a radial and/or axial clamping force." In order to be interpreted under 35 U.S.C. 112(f) and be limited to the means for applying disclosed in the specification, for example, the disclosed clamping units 8. That the clamping mechanism of Nakaya (e.g., W1, W2, W3) does not perform the identical function recited in claim 1 in substantially the same way as the disclosed "means for applying" or produce substantially the same results as the claimed means for applying. It is therefore respectfully submitted that Nakaya does not show the means for applying of amended claim 1 or a structure equivalent to the means for applying of amended claim 1, and that claim 1 is not anticipated by Nakaya.
Applicant’s position in not agreed with. In response, it is noted that, though Nakaya et al. does not particularly teach means for applying radial and/or axial clamping force to the work piece that is in a form of either clamping cylinder or slide shoe as described in the specification as the corresponding structure. However, each of the clamping units (5a and 5b, see figures 1, 2A-2C & 3, and column 3, lines 1-5 and lines 40-58) of Nakaya et al. is structurally connected to a spindle (3a, 3b), saddle (8a and 8b) and guide rails (7a and 7b) ( see column 3, lines 1-58) so as to operably apply a radial and an axial clamping force to the workpiece (W1 and W2) in substantially the same manner as the claimed device, hence the clamping unit disclosed by Nakaya et al. is structurally and functionally equivalent to the instantly-claimed means for applying radial and/or axial clamping for to the work piece. (also see MPEP 2181).
Conclusion
12. 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.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ABOAGYE whose telephone number is (571)272-8165. The examiner can normally be reached 8:30AM-5:00PM.
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/M.A/Examiner, Art Unit 1733
/JESSEE R ROE/Primary Examiner, Art Unit 1759
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