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 .
DETAILED ACTION
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Election/Restrictions
Applicant's election with traverse of Invention II, Species A, claims 14-17 and 20-22 in the reply filed on 8 August 2026 is acknowledged. The traversal is on the ground(s) that there would be no burden on the Examiner to examine all of the inventions/species. This is not found persuasive because the non-elected inventions/species would at least require searching in B23B 29/03, 35/00, and 41/16, which are not required for the election invention/species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-13, 18-19, and 23 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8 August 2026.
Additionally, claim 20 is withdrawn as being drawn to a non-elected species, as claim 20 only reads on non-elected Species D or E.
Specification
The disclosure is objected to because of the following informalities: the specification refers to specific claim numbers which may be changed if the application is placed into condition for allowance.
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 14-17 and 21-22 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.
The term “essentially” in claim 14 is a relative term which renders the claim indefinite. The term “essentially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “essentially” has been used to further define a prismatic or cuboidal body, and it is unclear from the claim and specification how the body is essentially prismatic or cuboidal.
The term “rod-like” in claim 15 is a relative term which renders the claim indefinite. The term “rod-like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “rod-like” has been used to further define at least one setting member, and it is unclear from the claim and specification how the at least one setting member is rod-like.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 14-15 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Basteck (US 5,733,075).
Regarding claim 14, Basteck discloses a cassette 45 for a machining tool 11 according to claim 1, in the design as essentially prismatic body (tetrahedral prism), which, for the fixation to the tool can be pushed with three of its outer surfaces 49/51/54 against corresponding stops (against screws 57/61 and the tool wall surfaces) of the tool by means of a clamping screw 57/61, and carries a guide rail 48 on a radially outer side surface (although the guide rail 48 faces radially inward on the machining tool, it is on a radially outer side surface of the cassette), a section (side of cassette to the right of screw 57 in figure 6) of the cassette carrying the guide rail is connected to a section (section to the left of screw 57 in figure 6) that is fixed to the cassette via a material joint (solid portions in between the sections), and the material joint can be blocked by means of a setting means 63/64.
Regarding the intended use limitation “for a machining tool according to claim 1” in the preamble of the claim, it is noted that the prior art used in the rejection is capable of being used for this function. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2112 - § 2112.02.
Regarding claim 15, Basteck discloses wherein the setting means 63/64 has at least one setting member 63/64, the length of which can be set (the radial position is adjustable to provide a different length for blocking the cassette) and which is formed in a rod-like manner (see figure 1).
The “wherein the cassette and/or the material joint is produced by means of a material-removing machining” and “wherein the cassette and/or the material joint is produced using a 3D printing process” limitations in claims 21-22 are being treated as product-by-process limitations and as such do not further limit the claims beyond the structural limitations cited in the claims. As stated in MPEP 2113 [R-1], “Even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Allowable Subject Matter
Claims 16-17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hecht et al. (US 10,201,861) discloses a cassette for a machining tool that holds a guide pad.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC A. GATES/Primary Examiner, Art Unit 3722 16 September 2026
Prosecution Insights