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 .
Election/Restrictions
Newly submitted claims 16-26 are directed to an invention that is independent or distinct from the invention/species originally elected for the following reasons: the claims are directed toward the embodiment illustrated in Figure 4. Accordingly, claims 17-26 have been withdrawn from consideration as being directed to a non-elected invention.
Claim Rejections - 35 USC § 112
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 5 and 12 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.
Claim 5 recites “the at least three support arms comprise exactly four support arms mutually spaced apart by an angle of 90°.” This recitation contains new matter. The limitation at the time of filing lacks support in the specification for the four support arms mutually spaced apart by an angle of 90°. Appropriate correction required.
Claim 12 recites “the axes of rotation of the at least three exchangeable support sleeves line in a same plane.” This recitation contains new matter. The limitation at the time of filing lacks support in the specification for the axis of rotation the lying in a same plane. Appropriate correction required.
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, 2, 5 and 12-15 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.
Claim 1 recites the limitation “the respective support arm” in Line 15. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 12 limitation “means for causing the workpiece to rotate” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 15 recites “a respective one of the at least three support arms” in Line 3. Yet, claim 1 recites to the respective support arm. As such, it is unclear whether the respective support arm is different in claim 15 from that recited in claim 1 or not. Appropriate correction required.
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, 5 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Makkonen (WO 2012/101319 A1).
(Claim 1) Makkonen discloses a workpiece holding device that includes clamping means (102) for applying a radial clamping force to a workpiece to hold the workpiece in the workpiece holding device in a predefined position (Fig. 2), and support means (102a) for supporting the workpiece (Page 7, Lines 1-6). The support means (102a) includes at least three support arms (fastening members shown in Fig. 3 acting as support arms for sleeves to rotate about) each having a longitudinal axis and an exchangeable support sleeve rotatably mounted on each of the at least three support arms (Figs. 1-3). The exchangeable support sleeves being configured to contact and rotatably support an axial end of the workpiece (Fig. 7, Lines 1-6). It is worth noting that the intended use limitation is likely broader than Applicant intends. An axial end is not the same as reciting an axial end surface of a particular workpiece. Without more, the reference reads upon the limitation. Each of the at least three exchangeable support sleeves is configured to rotate around the longitudinal axis of the respective support arm (Figs. 1-3; (Fig. 7, Lines 1-6).
(Claim 2) A radial distance of the exchangeable support sleeves to a center point of the workpiece holding device is adjustable (via slots 104).
(Claim 5) The at least three support arms are exactly four support arms mutually spaced from one another by 90 degrees (Figs. 1-3).
(Claim 12) The axes of rotation of the at least three exchangeable support sleeves line in a same plane (Figs. 1-3). That is, the axes of rotation all lie in a plane perpendicular to the axis 107 in Figure 2.
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.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Makkonen (WO 2012/101319 A1) in view of Inushko et al. (US Patent No. 11,027,381 B2).
(Claim 13) Makkonen does not explicitly disclose means for causing the workpiece to rotate.
Inushko discloses means (10) for causing the workpiece to rotate about an axis of rotation (Figs. 1, 2). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the workpiece holding device disclosed in Makkonen with means for causing the workpiece to rotate as disclosed in Inushko in order to drive the workpiece relative to the workpiece support.
(Claim 14) The modified Makkonen device includes the workpiece (Makkonen 106, clm. 1; Inushko 14), which is annular. The axial end of the workpiece is in contact with and supported by the support sleeves of the at least three support arms (Makkonen Fig. 2).
(Claim 15) The clamping means include at least three clamping bodies (102) each rotatably mounted on a respective one of the at least three support arms and having a circumferential outer surface configured to be pressed radially against a circumferential surface of the annular workpiece (via screw threads of bolt).
Response to Arguments
Applicant’s arguments with respect to claim 1 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.
Examiner suggests setting forth the orientations, for example via longitudinal axes of features, of the clamping means, arms and sleeves.
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 RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RYAN RUFO/Primary Examiner, Art Unit 3722
Prosecution Insights