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:
“inner-periphery holding part” recited in claim 1
“outer-periphery holding part” recited in claim 1
“pressing member” recited in claim 2
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.
Examiner notes that the limitation “inner-periphery holding part” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (e.g., “part”).
(B) The generic placeholder is modified by functional language (e.g., “inner-periphery holding” and “configured to hold an inner periphery of the tapered shank and prevent axial movement of the tool”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “inner-periphery holding part” will be interpreted so as to comprise ‘a holder comprising a cylindrical peripheral wall and a plurality of through holes disposed through the cylindrical peripheral wall, a plurality of steel balls disposed in the plurality of through holes in a radially movable manner, and a pressing member comprising a cylindrical shaft located on an outer periphery of the plurality of steel balls and within the cylindrical peripheral wall,’ or a functional equivalent thereof, as taught by the Specification (paragraphs 11 and 12).
Examiner notes that the limitation “outer-periphery holding part” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (e.g., “part”).
(B) The generic placeholder is modified by functional language (e.g., “outer-periphery holding” and “configured to prevent radial movement of the tool”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “outer-periphery holding part” will be interpreted so as to comprise ‘a plurality of pins,’ or a functional equivalent thereof, as taught by the Specification (paragraph 51).
Examiner notes that the limitation “pressing member” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing a claimed function (e.g., “member”).
(B) The generic placeholder is modified by functional language (e.g., “pressing” and “configured to press the plurality of steel balls radially outward”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “pressing member” will be interpreted so as to comprise ‘a shaft housed within a pneumatically charged cylinder,’ or a functional equivalent thereof, as taught by the Specification (paragraph 12).
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 – 4 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 “an end-face holding part configured to prevent rotation of the tool, which is implemented by a key that is fitted into a keyway provided at an anti-V-flange-side end surface of the tapered shank” in the second paragraph of the body of the claim. The limitation is indefinite for several reasons. First, Examiner notes that the preamble of the claim is directed towards “a tool pot.” The limitation is indefinite because it is unclear as to whether Applicant intends the limitation to positively require a step of ‘fitting a key into a keyway,’ such that the claim is directed towards a ‘method of holding a tool using a tool pot,’ or whether Applicant intends the limitation to recite functional language of the ‘end-face holding part,’ such that the claim is directed towards the ‘tool pot’ itself. Secondly, it is unclear as to whether Applicant intends the limitation to require that the ‘end-face holding part’ comprises the ‘key,’ or whether Applicant intends the limitation to require that the ‘end-face holding part’ is configured to cause the ‘key’ to be fitted into the ‘keyway.’ For the purposes of this Office Action, Examiner will interpret the limitation as “an end-face holding part that comprises a key and is configured to prevent rotation of the tool, wherein the key is configured to be fitted into a keyway provided at an anti-V-flange-side end surface of the tapered shank.”
Claim 1 further recites the limitation “an outer-periphery holding part that is opposed to an outer periphery of the V-flange [of the tool]” in the third paragraph of the body of the claim. Examiner notes that the preamble of the claim is directed towards “a tool pot.” The limitation is indefinite because it is unclear as to whether Applicant intends the limitation to positively require a step of ‘locating the outer-periphery holding part such that it is opposed to an outer periphery of the V-flange [of the tool],’ such that the claim is directed towards a ‘method of holding a tool using a tool pot,’ or whether Applicant intends the limitation to recite functional language of the ‘outer-periphery holding part,’ such that the claim is directed towards the ‘tool pot’ itself. For the purposes of this Office Action, Examiner will interpret the limitation so as to recite functional language of the ‘outer-periphery holding part.’
Claim 1 further recites the limitation “the inner-periphery holding part, the end-face holding part, and the outer-periphery holding part hold the tool in a state where there are clearances ...” in the last paragraph of the claim. Examiner notes that the preamble of the claim is directed towards “a tool pot.” The limitation is indefinite because it is unclear as to whether Applicant intends the limitation to positively require a step of ‘holding the tool,’ such that the claim is directed towards a ‘method of holding a tool using a tool pot,’ or whether Applicant intends the limitation to recite functional language of the ‘inner-periphery holding part,’ the ‘end-face holding part,’ and the ‘outer-periphery holding part,’ such that the claim is directed towards the ‘tool pot’ itself. For the purposes of this Office Action, Examiner will interpret the limitation so as to recite functional language of the ‘inner-periphery holding part,’ the ‘end-face holding part,’ and the ‘outer-periphery holding part.’
Claim 2 recites the limitation “a holder ... positioned radially inward of the tapered shank [of the tool]” in the first paragraph of the body of the claim. Examiner notes that the preamble of the claim is directed towards “a tool pot.” The limitation is indefinite because it is unclear as to whether Applicant intends the limitation to positively require a step of ‘positioning a holder radially inward of the tapered shank of the tool,’ such that the claim is directed towards a ‘method of holding a tool using a tool pot,’ or whether Applicant intends the limitation to recite functional language of the ‘holder,’ such that the claim is directed towards the ‘tool pot’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “a holder ... configured to be positioned radially inward of the tapered shank [of the tool].”
Claim 2 further recites the limitation “... the through holes each being provided at a part, opposed to the tapered shank [of the tool], of the peripheral wall of the holder.” Examiner notes that the preamble of the claim is directed towards “a tool pot.” The limitation is indefinite because it is unclear as to whether Applicant intends the limitation to positively require a step of ‘positioning the through holes such that the through holes are opposed to the tapered shank [of the tool],’ such that the claim is directed towards a ‘method of holding a tool using a tool pot,’ or whether Applicant intends the limitation to recite functional language of the ‘holder,’ such that the claim is directed towards the ‘tool pot’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... the through holes each being provided on the peripheral wall of the holder.”
Claim 2 further recites the limitation “the plurality of steel balls pressed by the pressing member move radially outward to press a tapered face [of the tool] ...” in the last paragraph of the claim. Examiner notes that the preamble of the claim is directed towards “a tool pot.” The limitation is indefinite because it is unclear as to whether Applicant intends the limitation to positively require a step of ‘pressing the plurality of steel balls so that the plurality of steel balls move radially outwards and press a tapered face [of the tool],’ such that the claim is directed towards a ‘method of holding a tool using a tool pot,’ or whether Applicant intends the limitation to recite functional language of the ‘plurality of steel balls,’ such that the claim is directed towards the ‘tool pot’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “the plurality of steel balls being configured to be pressed by the pressing member and move radially outward to press a tapered face ...”
Claim 4 recites the limitation “the outer-periphery holding part is configured by a plurality of pins that are opposed to an outer peripheral surface of the V-flange [of the tool]. The limitation is indefinite for several reasons. First, Applicant’s intent regarding “is configured by a plurality of pins” is generally unclear. Secondly, Examiner notes that the preamble of the claim is directed towards “a tool pot.” The limitation is further indefinite because it is unclear as to whether Applicant intends the limitation to positively require a the ‘plurality of pins be located at a position opposed to an outer peripheral surface of the V-flange of the tool,’ such that the claim is directed towards a ‘combination of a tool pot and a tool,’ or whether Applicant intends the limitation to recite functional language of the ‘plurality of pins,’ such that the claim is directed towards the ‘tool pot’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “the outer-peripheral holding part comprises a plurality of pins, wherein the plurality of pins are configured to oppose an outer peripheral surface of the V-flange [of the tool].”
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.
Claim(s) 1 - 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mizuno (U.S. Patent Application Publication Number 2008/0223169).
As to claim 1, Mizuno teaches a tool pot configured to hold a tool (figure 1, element 1 being the ‘tool pot’; paragraph 23), the tool pot comprising: an inner-periphery holding part, that comprises a holder comprising a cylindrical peripheral wall and a plurality of through holes disposed through the cylindrical peripheral wall, a plurality of steel balls disposed in the plurality of through holes in a radially movable manner, and a pressing member comprising a cylindrical shaft located on an outer periphery of the plurality of steel balls and within the cylindrical peripheral wall (figures 1, 2, and 5 – 7, elements 11, 13, 15, and 9 being the ‘inner-periphery holding part,’ element 11 being the ‘cylindrical peripheral wall,’ elements 11a being the ‘through holes,’ elements 13 and 15 being the ‘plurality of steel balls,’ and element 9 being the ‘pressing member’ and ‘cylindrical shaft’; paragraphs 24 – 25 and 41 - 45), configured to hold an inner periphery of a tapered shank of the tool and prevent axial movement of the tool (figures 5 – 7, elements 11, 13, 15, and 9; paragraphs 41 – 45); an end-face holding part that comprises a key and is configured to prevent rotation of the tool, wherein the key is configured to be fitted into a keyway provided at an anti-V-flange-side end surface of the tapered shank of the tool (figures 1, 2, and 7, left element 20 being the ‘end-face holding part’ and ‘key’; paragraphs 31 and 40); and an outer-periphery holding part, which comprises a pin (figures 1 and 2, right element 20 being the ‘outer-periphery holding part’ and ‘pin’; paragraph 31), that is configured to oppose an outer periphery of a V-flange of the tool and is configured to prevent radial movement of the tool (figures 7, right element 20; paragraph 40), wherein the inner-periphery holding part, the end-face holding part, and the outer-periphery holding part each are configured to hold the tool in a state where there are clearances with respect to an outer peripheral tapered surface of the tapered shank of the tool and an end face of the V-flange of the tool, respectively (figure 7, elements 11 and 20).
Regarding the recitation in the preamble of the claim that the tool comprising ‘a V-flange provided with a V-groove, and a tapered shank continued to the V-flange and having a hollow shape,’ it is the position of the Examiner that the tool pot of Mizuno is configured for use with the tool recited in the claim.
As to claim 2, the discussion of claim 1 is incorporated herein.
As to claim 3, Mizuno teaches that the pressing member has a shaft shape (figure 1, element 9; paragraph 24) and has a distal end portion provided at an outer periphery thereof with a tapered face (figure 2, element 17a being the ‘distal end’ and ‘tapered face’; paragraph 29), and is disposed in a cylinder chamber so as to move in an axial direction of the pressing member upon supply of compressed air (figure 2, elements 9 and 11; paragraphs 41 – 45), and movement of the distal end portion of the pressing member in a distal end direction thereof causes the tapered face to move the plurality of steel balls radially outward (figures 5 – 7, elements 17a, 13, and 15; paragraphs 41 – 45).
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.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mizuno as applied to claim 1 above.
As to claim 4, Mizuno taches that the outer-periphery holding part comprises a pin, wherein the pin is configured to oppose an outer peripheral surface of the V-flange of the tool (figures 1, 2, and 7, right element 20; paragraph 40).
However, Mizuno teaches that the outer-periphery holding part comprises a single pin, rather than a plurality of pins. It would have been obvious to one skilled in the art to provide the tool pot of Mizuno with a plurality of the pins of the outer-periphery holding part, because one skilled in the art would appreciate that providing additional pins would provide the benefit of better ensuring that the tool is properly supported and positioned by the tool pot, as desired by Mizuno (paragraphs 35 and 40)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726