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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/11/2026 has been entered.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10, drawn to “A machine tool for the shaping production of an article’) in the reply filed on 12/1/2025 was previously acknowledged.
Claim 11 was previously withdrawn (and still is) from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/1/2025.
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 “hydraulic clamp” of claim 14 and the “sensor” of claim 14 must 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 reading device for reading the machine-readable code” in claim 8;
“the reading device detects the machine-readable code” in claim 9; and
“a reading device” (noting that the term “reading” is a function, such that the claim recites a device for performing the function of reading, but recites no additional structure sufficient to perform the function of reading) in claim 13.
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 13 of the claim, “the article” should be changed to “the selected article”. 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, 3, 7-10, 13, and 14 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 10 of claim 1 states, “wherein the tools are equipped with the machine-readable code.” This limitation is viewed to be vague and indefinite, because as claimed, it is unclear if each of the tools is equipped with the same machine-readable code, or if instead, each of the tools is equipped with a respective machine-readable code.
Lines 11-12 of claim 1 state, “wherein the controller is configured to, upon selection of the article to be produced via the input device, retrieve the article from the list of articles stored in the memory.” This limitation is viewed to be vague and indefinite, because it is unclear as to what is meant by the controller is configured to retrieve the article from the list of articles. Considering the article is the product that is to be produced and the controller isn’t capable of retrieving a physical product, is the controller actually retrieving undisclosed code, for example, for the article?
Claim limitation “a reading device for reading the machine-readable code” of claim 8 and “the reading device detects the machine-readable code” of claim 9, and “a reading device” of claim 13 each 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. Examiner notes that the specification simply states the following as it pertains to the “reading device”.
[0014] The tools can be equipped with a machine-readable code. Preferably, the code can be read remotely. A machine-readable code can be read automatically by a reading device, wherein the tool type is stored for the code in the control device. This makes it possible for the machine tool to have a stock with a plurality of tools, wherein the tools can be transported and read by a suitable transport device. In this case, the code can be read optically or electromagnetically. In the case of optical readability, the tools are provided with an optically readable code, for example a bar code or a DM code (data matrix code). In the case of electromagnetic readability, the readout is performed on active or passive transmitters attached to the tool. RFID tags can be attached to the tools for this purpose, for example.
[0017] A reading device for reading the code can be assigned to the tool feed. The tool feed also preferably comprises a transport device for transporting the tools. The transport device can simultaneously serve to transport the tools and display the stock of tools. For example, the transport device can be designed as a conveyor belt on which the tools are arranged. The tools can be transported here in a circulating manner. The tools pass the reading device and the machine tool selects, in automated fashion, the tool that is assigned to the article to be produced. Alternatively, the transport device can be assigned a separate tool stock, into which the tools can be automatically stored and from which the tools can be automatically removed. It is also conceivable to manage the tool transport between the tool stock and the tool feed with the aid of an automated, driverless transport system.
[0018] Subsequently, the tool is fastened in automated fashion to the tool receptacle. Accordingly, the tools can pass the reading device during transport by means of the transport device, wherein the reading device detects the code.
[0022] Here, the machine tool is preferably a stamping machine. The stock of tools comprises a transport device for transporting the tools and a reading device for reading the codes which are attached to the stamping tools.
[0023] For the production of an article, a list of articles to be produced is stored in the memory of the control unit. A tool and a machine-readable code belonging to the tool are assigned here to each of the articles to be produced. The tools are transported via the transport device and read during transport by means of the reading device. If the reading device detects a tool belonging to the article to be manufactured, it is removed from the stock and attached to the tool feeder. The articles can then be produced.
[0033] The tool feed 3 comprises a transport device 9 for transporting the tools 5. This transport device is designed in the present case as a conveyor belt, wherein the tools 5 are transported in a circulating manner on the transport device 9. The tool feed 3 is also equipped with a reading device 10 for reading the machine-readable codes 7 attached to the tools 5.
[0034] For the exchange of the tool 5, the tools 5 are transported in circulation over the transport device 9 until the reading device 10 has detected the tool 5 belonging to the article to be produced of the current production order. This is then selected and is fed in automated fashion to the tool receptacle 2 via a feed device belonging to the tool feed 3 and is automatically fastened to the tool receptacle 2. The fitting time can be reduced if the tools 5 are transported via the transport device 9, and, for each tool 5 that passes the reading device 10, it is checked whether there is a production order for the article assigned to the tool 5. If so, the tool 5 is selected and installed. If not, the tools 5 are transported further.
Based on the foregoing, the specification does not provide sufficient details concerning the “reading device” such that one of ordinary skill in the art would understand how or in what way that the reading device performs the entire claimed function of “reading the machine-readable code” of claim 8, “detects the machine-readable code” of claim 9, and “reading” of claim 13. 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.
NOTE: In order to overcome the corresponding rejection of each of claims 8, 9, and 13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, Examiner suggests amending each instance of “reading device” to instead recite “reader”. Also be advised that by amending each instance of “reading device” to instead recite “reader”, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph would not be invoked by “reader”.
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, 3, 7-10, 13, and 14 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.
As described above, the disclosure does not provide adequate disclosure to perform any of the following claimed function(s):
“reading the machine-readable code” (claim 8, line 2);
“detects the machine-readable code” (claim 9, line 4); and
“reading” (claim 13, line 2).
NOTE: In order to overcome the corresponding rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, Examiner suggests amending each instance of “reading device” to instead recite “reader”. Also be advised that by amending each instance of “reading device” to instead recite “reader”, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph would not be invoked by “reader”.
Lines 8-9 of claim 1 state, “wherein the list of articles to be produced stored in the memory assigns, for each article of the list, a tool of the tools and a machine-readable code of the tool.” This limitation fails to comply with the written description requirement. This will now be explained.
Regarding the specification as filed by Applicant on 4/25/2023, it discloses the following:
[0016] The control device can comprise a memory, wherein a list of articles to be produced is stored in the memory, wherein a tool and a machine-readable code belonging to the tool are assigned to the articles to be produced. The list can be entered here into the control device by means of the input device. The list is used to assign tools to the articles to be produced. It is conceivable here to generate the list by means of the input device or to transfer it to the control device via the input device.
[0023] For the production of an article, a list of articles to be produced is stored in the memory of the control unit. A tool and a machine-readable code belonging to the tool are assigned here to each of the articles to be produced. The tools are transported via the transport device and read during transport by means of the reading device. If the reading device detects a tool belonging to the article to be manufactured, it is removed from the stock and attached to the tool feeder. The articles can then be produced.
As can be seen in the above excerpts from the specification filed on 4/25/2026, a tool and a machine-readable code are undoubtedly assigned to the article(s) to be produced. Furthermore, as can be seen above in paragraph [0016] of the specification, the list of articles is disclosed as being “used to assign tools to the articles to be produced.” Disclosure; however, is not provided in paragraph [0016] (or elsewhere for that matter) on the list of articles “assigns” for each article of the list “a machine-readable code of the tool.” In lines 8-9 of claim 1, by setting forth, “wherein the list of articles to be produced stored in the memory assigns, for each article of the list…a machine-readable code of the tool,” Applicant is in effect setting forth the list of articles as functioning to actively assign a machine-readable code of the tool for each article of the list. There is no such disclosure for this in the specification.
While paragraph [0023] makes it abundantly clear that a list of articles to be produced is stored in the memory of the control unit and that a machine-readable code belonging to the tool is assigned to each of the articles to be produced, Applicant never goes as far as to disclose the list of articles being produced actively assigning, for each article of the list, a machine-readable code of the tool. On a side note, “For the production of an article, a list of articles to be produced is stored in the memory of the control unit. A tool and a machine-readable code belonging to the tool are assigned here to each of the articles to be produced,” (emphasis added) is unclear language. It is not clear if the “here” in this paragraph is referring to the list of the articles, or is referring to the memory, or is instead referring to the control unit. Even if “here” is referring to the list of articles (and again it is not actually clear if this is the case), there isn’t a way to definitively know if “are assigned here” means that both the tool and machined-readable code are simply being assigned to the list of articles, or if instead, “are assigned here” means that both the tool and the machined-readable code are being assigned at list the of articles by the list of articles, for example. While it is certainly possible that the tool and machined-readable code are assigned at list the of articles by the list of articles, Examiner cannot eliminate the possibility that the machined-readable code is not assigned by the list of the articles, but is instead assigned by the memory or the control device, for example. Please be advised that it is not a matter of whether something is merely likely, but rather when something has to be a certain way. Based on the foregoing, the specification filed on 4/25/2023 does not provide disclosure for, “wherein the list of articles to be produced stored in the memory assigns, for each article of the list, a tool of the tools and a machine-readable code of the tool.”
Next, with respect to the drawings filed on 4/25/2023 and 3/20/2026, the machine tool (1) is shown as comprising a control device (6). Noting this, the list articles saved to the memory of the control device (6) isn’t shown. As such, the drawings neither show nor provide a means to determine if the list of articles “assigns” for each article of the list, a machine-readable code of the tool. Thus, the drawings filed on 4/25/2023 and 3/20/2026 do not provide disclosure for, “wherein the list of articles to be produced stored in the memory assigns, for each article of the list, a tool of the tools and a machine-readable code of the tool.”
Since neither the specification nor the drawings are in agreement with the claimed subject matter, it cannot be reasonably conveyed to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AJA the inventor(s), at the time the application was filed, had possession of the claimed invention.
NOTE: In order to overcome the corresponding rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, Examiner suggests the following amendment: “wherein the list of articles to be produced is stored in the memoryand wherein a tool of the tools and a machine-readable code of the tool is assigned to each article of the lists of articles to be produced.”
Lines 11-14 of claim 1 state, “wherein the controller is configured to, upon selection of the article to be produced via the input device, retrieve the article from the list of articles stored in the memory and correlate the selected article with the tool and the machine-readable code assigned to the article in the list.” This limitation fails to comply with the written description requirement. This will now be explained.
Regarding the specification as filed by Applicant on 4/25/2023, there isn’t any disclosure therein about the controller/control device (6), upon selection of the article to be produced via the input device, either functioning to “retrieve the article from the list of articles stored in the memory” or to “correlate the selected article with the tool and the machine-readable code assigned to the article in the list.” As can seen below in paragraph [0019], the controller/control device (6) has an input device for selecting the article to be produced, and the controller/control device (6) uses the list to determine the tool required for producing the article. Also, as can seen below in paragraph [0031], the controller/control device (6) monitors the manufacturing process and records when a production order has been completed; initiates the exchange of the tool 5 as soon as the order has been finished; gives corresponding signals to the tool receptacle 2, the transport device 9 and the machine tool 1 in order to carry out the necessary movements for the tool exchange; and also specifies parameters for the cutting device which cuts the strip-shaped semi-finished product to length. Furthermore, as can seen below in paragraph [0032], the controller/control device (6) causes the correct positioning of the tool 5 and of the press ram; specifies production parameters for the production of the new article, for example the feed rate and the shaping speed; and contain parameters for both the tool change and the production process.
[0019] The control device can have an input device for selecting the article to be produced, wherein the control device uses the list to determine the tool required for producing the article. This is automated, so that the entire tool change and fitting process is possible without manual intervention.
[0031] The control unit 6 monitors the manufacturing process and records when a production order has been completed. As soon as a production order is finished, the control unit 6 initiates the exchange of the tool 5. For the exchange of the tool 5, process steps and process parameters for the exchange process are stored in the control unit 6. The control unit 6 gives corresponding signals to the tool receptacle 2, the transport device 9 and the machine tool 1 in order to carry out the necessary movements for the tool exchange. The tool exchange process includes parameters for both tool removal and tool installation. The control unit 6 also specifies parameters for the cutting device which cuts the strip-shaped semi-finished product to length.
[0032] The control unit 6 also causes the correct positioning of the tool 5 and of the press ram. Furthermore, the control unit 6 specifies production parameters for the production of the new article, for example the feed rate and the shaping speed. Accordingly, the control unit 6 contains parameters for both the tool change and the production process. In this context, it is conceivable that the machine tool 1 comprises a first control unit for the tool change and a second control unit for the production process. In the first control unit parameters for the tool change are stored and in the second control unit parameters for the production process are stored. Both control units can access a common memory in which the parameters are stored.
At no point in any of paragraphs [0019], [0031], and [0032] of the specification (or elsewhere in the specification for that matter) does Applicant provide disclosure for the controller/ control device (6) functioning to “retrieve the article from the list of articles stored in the memory” or functioning to “correlate the selected article with the tool and the machine-readable code assigned to the article in the list” upon selection of the article to be produced via the input device. Based on the foregoing, the specification filed on 4/25/2023 does not provide disclosure for, “wherein the controller is configured to, upon selection of the article to be produced via the input device, retrieve the article from the list of articles stored in the memory and correlate the selected article with the tool and the machine-readable code assigned to the article in the list.”
Next, with respect to the drawings filed on 4/25/2023 and 3/20/2026, the machine tool (1) is shown as comprising a control device (6). Functions of the controller/control device (6) are not illustrated though in Figure 1 (which is the only figure) of the drawings. As such, the drawings neither show nor provide a means to determine if the controller/control device (6) is configured to, upon selection of the article to be produced via the input device, to “retrieve the article from the list of articles stored in the memory” or to “correlate the selected article with the tool and the machine-readable code assigned to the article in the list.” Based on the foregoing, the drawings filed on 4/25/2023 and 3/20/2026 do not provide disclosure for, “wherein the controller is configured to, upon selection of the article to be produced via the input device, retrieve the article from the list of articles stored in the memory and correlate the selected article with the tool and the machine-readable code assigned to the article in the list.”
Since neither the specification nor the drawings are in agreement with the claimed subject matter, it cannot be reasonably conveyed to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AJA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Lines 15-17 of claim 1 state, “wherein the machine tool is configured, based on the correlation performed by the controller, to select the tool of the tools from the stock of tools and to fasten the tool to the tool receptacle.” This limitation fails to comply with the written description requirement. This will now be explained.
Regarding the specification as filed by Applicant on 4/25/2023, it discloses the following:
[0006] In an embodiment, the present disclosure provides a machine tool for the shaping production of an article, comprising a tool receptacle, a tool feed, a stock of tools, and a controller, wherein the machine tool is configured to select one of the tools from the stock in dependence on the article to be produced and to fasten the article to the tool receptacle.
[0010] In an embodiment, a machine tool for the shaping production of an article comprises a tool receptacle, a tool feed, a stock of tools and a control device, wherein the machine tool is set up to select a tool from the stock in dependence on the article to be produced and to fasten it to the tool receptacle.
[0015] The control device can comprise an input device for selecting the article. The input device can be implemented here by an interface via which electronic article information can be transferred to the machine tool. In this context, it is also conceivable that a work order in the form of a list of different articles to be produced is transferred via the input device. In this case, the list contains information on the tool required for the production of an article. If an article from the list is to be manufactured, the machine tool can use the list and the tool specified therein to select a tool from the stock of tools and attach it in an automated fashion to the tool receptacle.
As can be seen in the above excerpts from the specification filed on 4/25/2026, if an article from the list is to be manufactured, the machine tool can use the list and the tool specified therein to select a tool from the stock of tools and attach it in an automated fashion to the tool receptacle [paragraph 0015]. Moreover, the machine tool is set up/configured to select a tool from the stock and to fasten it to the tool receptacle in dependence on the article to be produced [paragraphs 0006, 0010]. Disclosure; however, does not extend to the machine tool being configured to select the tool of the tools from the stock of tools and to fasten the tool to the tool receptacle “based on the correlation performed by the controller.” Based on the foregoing, the specification filed on 4/25/2023 does not provide disclosure for, “wherein the machine tool is configured, based on the correlation performed by the controller, to select the tool of the tools from the stock of tools and to fasten the tool to the tool receptacle.”
Next, with respect to the drawings filed on 4/25/2023 and 3/20/2026, while the overall machine tool (1) is shown in Figure 1 (which is the only figure of the drawings), the drawings
neither show nor provide a means to determine if the machine tool (1) is configured to select the tool of the tools from the stock of tools and to fasten the tool to the tool receptacle “based on the correlation performed by the controller.” Thus, the drawings filed on 4/25/2023 and 3/20/2026 do not provide disclosure for, “wherein the machine tool is configured, based on the correlation performed by the controller, to select the tool of the tools from the stock of tools and to fasten the tool to the tool receptacle.”
Since neither the specification nor the drawings are in agreement with the claimed subject matter, it cannot be reasonably conveyed to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AJA the inventor(s), at the time the application was filed, had possession of the claimed invention.
NOTE: In order to overcome the corresponding rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, Examiner suggests the following amendment: “wherein the machine tool is configured
Lines 2-4 of claim 13 state, “the controller is further configured to, as each tool of the tools passes the reading device during transport, determine that the tool passing the reading device is the tool correlated with the selected article to select and fasten, by the machine tool, the tool to the tool receptacle.” This will now be explained.
Regarding the specification as filed by Applicant on 4/25/2023, there isn’t any disclosure therein about the controller/control device (6) being “further configured to, as each tool of the tools passes the reading device during transport, determine that the tool passing the reading device is the tool correlated with the selected article to select and fasten, by the machine tool, the tool to the tool receptacle.” As can seen below in paragraph [0019], the controller/control device (6) has an input device for selecting the article to be produced, and the controller/control device (6) uses the list to determine the tool required for producing the article. Also, as can seen below in paragraph [0031], the controller/control device (6) monitors the manufacturing process and records when a production order has been completed; initiates the exchange of the tool 5 as soon as the order has been finished; gives corresponding signals to the tool receptacle 2, the transport device 9 and the machine tool 1 in order to carry out the necessary movements for the tool exchange; and also specifies parameters for the cutting device which cuts the strip-shaped semi-finished product to length. Furthermore, as can seen below in paragraph [0032], the controller/control device (6) causes the correct positioning of the tool 5 and of the press ram; specifies production parameters for the production of the new article, for example the feed rate and the shaping speed; and contain parameters for both the tool change and the production process.
[0019] The control device can have an input device for selecting the article to be produced, wherein the control device uses the list to determine the tool required for producing the article. This is automated, so that the entire tool change and fitting process is possible without manual intervention.
[0031] The control unit 6 monitors the manufacturing process and records when a production order has been completed. As soon as a production order is finished, the control unit 6 initiates the exchange of the tool 5. For the exchange of the tool 5, process steps and process parameters for the exchange process are stored in the control unit 6. The control unit 6 gives corresponding signals to the tool receptacle 2, the transport device 9 and the machine tool 1 in order to carry out the necessary movements for the tool exchange. The tool exchange process includes parameters for both tool removal and tool installation. The control unit 6 also specifies parameters for the cutting device which cuts the strip-shaped semi-finished product to length.
[0032] The control unit 6 also causes the correct positioning of the tool 5 and of the press ram. Furthermore, the control unit 6 specifies production parameters for the production of the new article, for example the feed rate and the shaping speed. Accordingly, the control unit 6 contains parameters for both the tool change and the production process. In this context, it is conceivable that the machine tool 1 comprises a first control unit for the tool change and a second control unit for the production process. In the first control unit parameters for the tool change are stored and in the second control unit parameters for the production process are stored. Both control units can access a common memory in which the parameters are stored.
At no point in any of paragraphs [0019], [0031], and [0032] of the specification (or elsewhere in the specification for that matter) does Applicant provide disclosure for the controller/ control device (6) being “further configured to, as each tool of the tools passes the reading device during transport, determine that the tool passing the reading device is the tool correlated with the selected article to select and fasten, by the machine tool, the tool to the tool receptacle.” Based on the foregoing, the specification filed on 4/25/2023 does not provide disclosure for, “wherein the controller is configured to, upon selection of the article to be produced via the input device, retrieve the article from the list of articles stored in the memory and correlate the selected article with the tool and the machine-readable code assigned to the article in the list.”
Next, with respect to the drawings filed on 4/25/2023 and 3/20/2026, the machine tool (1) is shown as comprising a control device (6). Functions of the controller/control device (6) are not illustrated though in Figure 1 (which is the only figure) of the drawings. As such, the drawings neither show nor provide a means to determine if the controller/control device (6) is configured to,
“as each tool of the tools passes the reading device during transport, determine that the tool passing the reading device is the tool correlated with the selected article to select and fasten, by the machine tool, the tool to the tool receptacle.” Based on the foregoing, the drawings filed on 4/25/2023 and 3/20/2026 do not provide disclosure for, “the controller is further configured to, as each tool of the tools passes the reading device during transport, determine that the tool passing the reading device is the tool correlated with the selected article to select and fasten, by the machine tool, the tool to the tool receptacle.”
Since neither the specification nor the drawings are in agreement with the claimed subject matter, it cannot be reasonably conveyed to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AJA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Response to Arguments
With respect to the Claim interpretation under 35 U.S.C. § 112(f), Applicant argues the following:
The following terms in the claims of the present application were interpreted under 35 U.S.C. § 112(f): "a reading device" in claim 8, and "the reading device" in claim 9.
It is respectfully submitted that the foregoing terms do not invoke under 35 U.S.C. § 112(f) Specifically, in order to invoke 35 U.S.C. § 112(f), a claim limitation must, as a first prong of a three-prong analysis, use the term "means" or another nonce term. See MPEP § 2181(I). The following terms are recognized as nonce terms: "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." See MPEP § 2181(I)(A). In contrast, it is respectfully submitted that "a reading device," and "the reading device" of claims 8 and 9 are not nonce terms, and would each connote specific structure to a person of ordinarily skill in the art. For example, paragraph [0014] of U.S. Patent App. Pub. No. 2023/0398648 A1 (hereinafter "published specification"), describes that a machine-readable code can be read automatically by a reading device, and that in the case that the machine-readable code is optically readable, it is a bar code or a data matrix code. One of ordinary skill in the art would recognize that the a reading device would be a bar code reader for reading a bar code and that this would provide sufficient structure for the claimed limitation of a reading device and how it operates to read or interact with the machine-readable code.
Thus, it is respectfully submitted that claims 8 and 9 should not be interpreted under 35 U.S.C. § 112(f).
Applicant’s argument has been considered, but is not persuasive.
First, with respect to the list of non-structural generic placeholders that Applicant provided from MPEP § 2181(I)(A), please be advised that it is not a comprehensive list. In the same paragraph in MPEP § 2181(I)(A) in which that list was provided, the paragraph goes on to say the following: “Note that there is no fixed list of generic placeholders that always result in 35 U.S.C. 112(f) interpretation, and likewise there is no fixed list of words that always avoid 35 U.S.C. 112(f) interpretation. Every case will turn on its own unique set of facts.” As such, just because “reading device” is not listed in MPEP § 2181(I)(A) does not mean that “a reading device” from claim 8 and “the reading device” from claim 9 is not a generic placeholder.
Having said that, Examiner respectfully disagrees that “a reading device” connotes specific structure to a person of ordinarily skill in the art. Without, for example, knowing how the machine-readable code is necessarily embodied, how would “reading device” even begin to connote specific structure to a person of ordinary skill in the art?
Applicant then argues that, “For example, paragraph [0014] of U.S. Patent App. Pub. No. 2023/0398648 A1 (hereinafter "published specification"), describes that a machine-readable code can be read automatically by a reading device, and that in the case that the machine-readable code is optically readable, it is a bar code or a data matrix code. One of ordinary skill in the art would recognize that the a reading device would be a bar code reader for reading a bar code and that this would provide sufficient structure for the claimed limitation of a reading device and how it operates to read or interact with the machine-readable code.”
Noting this, Examiner would like to point out that smart phones and tablets are each able to read bar codes and data matrix codes. Is a smart phone or a tablet a bar code reader per se, or by bar code reader does Applicant mean some more akin to a handheld or mountable bar code scanner, for example, utilized in a warehouse or retail space.
As such, even if it is known how the machine-readable code is embodied, Examiner doesn’t see how specific structure is connoted to a person of ordinary skill in the art, when there are numerous devices (each having different structures) that can read, for example, bar codes and data matrix codes. On top of this, in paragraph [0014], Applicant also discusses the case of “electronic readability.” If the machine-readable code was an RFID tag, for example, Examiner notes that there are handheld and mountable RFID scanners that can read RFID tags, as well as certain smart phones and tablets that can read RFID tags. Again, there are numerous devices (each having different structures) that can read, for example, RFID tags.
Based on the foregoing, Examiner respectfully disagrees that a reading device “connotes specific structure to a person of ordinarily skill in the art” and additionally disagrees that, “One of ordinary skill in the art would recognize that the a reading device would be a bar code reader for reading a bar code and that this would provide sufficient structure for the claimed limitation of a reading device and how it operates to read or interact with the machine-readable code.” Rather than disclose any structure in paragraph [0014] (or elsewhere) in the specification as it pertains to claimed reading device of claims 8 and 9, Applicant provided in paragraph [0014] a few examples as to how the machine-readable code is able to be embodied. As was explained above though, examples of how the machine-readable code is able to be embodied though, does not serve to connote specific structure to a person of ordinary skill in the art as it pertains to said “reading device.” Applicant’s arguments are therefore not deemed to be persuasive.
Please note that Examiner provided suggestions in this office action (under the Claim Rejections - 35 USC § 112 heading) for how to avoid 35 U.S.C. § 112(f) being invoked.
With respect to the rejections of claims 8 and 9 under 35 U.S.C § 112, Applicant argues the following:
As noted above, in the 112(f) section of the response, the specification provides several examples of what constitutes the machine-readable code and MPEP § 2163 provides that although the written description must allow a person of ordinary skill in the art to recognize that the inventor invented the claimed subject matter, there is no requirement for literal support, and instead implied, inherent, or reasonable inferences are sufficient. With respect to the above noted paragraphs of the published specification, if the machine-readable code is a bar code, the reading device is inherently a bar code reader, and if the machine-readable code is an RFID tag, the reading device is an RFID reader. The interaction between the machine-readable code and the reader need to be specified in extreme detail and Applicant submits that the as-filed specification does provide sufficient details for one of ordinary skill in the art to determine how the reading device reads the machine-readable code or detects the machine-readable code.
In view of the foregoing arguments and amendments, reconsideration and withdrawal of the rejections of claims 8-9 and 12 under 35 U.S.C. § 112(a) and (b) is respectfully requested.
Applicant’s argument has been considered, but is not persuasive. Rather than disclose any structure in paragraph [0014] (or elsewhere) in the specification as it pertains to the claimed “reading device,” Applicant discloses a few examples in paragraph [0014] as to how the machine-readable code is able to be embodied. In the example utilized in the above argument, Applicant states that, “if the machine-readable code is an RFID tag, the reading device is an RFID reader.” Examiner notes that there are handheld and mountable RFID scanners that can read RFID tags, as well as certain smart phones and tablets that can read RFID tags. Each of these devices that can read RFID tags has a different structure. This is noted, because in the above argument Applicant even states that, “The interaction between the machine-readable code and the reader need to be specified in extreme detail and Applicant submits that the as-filed specification does provide sufficient details for one of ordinary skill in the art to determine how the reading device reads the machine-readable code or detects the machine-readable code” (emphasis added). Applicant states the need for “extreme detail” with respect to the interaction between “the machine-readable code and the reader” but then doesn’t actually offer this “extreme detail.” For example, Examiner cannot locate in the specification any details about structure corresponding to the “reading device” of claims 8 and 9. On a side note, Applicant in the above argument referred to the claimed “reading device” as a “reader.” This is noted, since Applicant doesn’t actually claim a “reader” in either claim 8 or 9. “Reader” unlike “reading device,” wouldn’t appear to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Next, with respect to Applicant’s argument that, “MPEP § 2163 provides that although the written description must allow a person of ordinary skill in the art to recognize that the inventor invented the claimed subject matter, there is no requirement for literal support, and instead implied, inherent, or reasonable inferences are sufficient,” Examiner notes that he was unable to locate the term “inference” anywhere in MPEP § 2163, and as such, MPEP § 2163 doesn’t appear to ever state that “there is no requirement for literal support, and instead implied, inherent, or reasonable inferences are sufficient.” Rather, for example, MPEP § 2163 (I)(B) states, “While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure.” Noting this, as was stated above under “Claim Interpretation,” “a reading device for reading the machine-readable code” in claim 8 and “the reading device detects the machine-readable code” in claim 9 is each being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Because these particular claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Applicant though, never discloses any structure in the specification filed on 4/25/2023 for the “reading device.” Within paragraph [0014] of the specification, Applicant discloses the following: “The tools can be equipped with a machine-readable code. Preferably, the code can be read remotely. A machine-readable code can be read automatically by a reading device, wherein the tool type is stored for the code in the control device.” There; however, isn’t any structure in this limitation (or elsewhere in the specification for that matter) corresponding to the reading device. Again, examples of how the machine-readable code is able to be embodied does not serve to connote specific structure to a person of ordinary skill in the art as it pertains to said “reading device.”
For the foregoing reasons, Applicant’s arguments are not deemed to be persuasive.
Please note that Examiner provided suggestions in this office action (under the Claim Rejections - 35 USC § 112 heading) for how to overcome the corresponding rejections under 35 U.S.C. § 112.
Lastly, with respect to the rejection of at least claim 1 under 35 U.S.C § 103, Applicant provides detailed arguments between pages 7-11 of Applicant’s Arguments filed on 8/11/2026. These detailed arguments were directed to the prior art rejections under 35 U.S.C § 103 made in the Final Rejection mailed on 6/15/2026. Having said that, Applicant’s arguments have been considered, but are moot. This because no art rejections are considered to presently apply to claims 1, 3, 7-10, 13, and 14. Presently, claims 1, 3, 7-10, 13, and 14 are rejected under both 35 U.S.C § 112(a) and 35 U.S.C § 112(b) in light of Applicant’s amendments filed on 8/11/2026.
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, 3, 7-10, 13, and 14. Examiner notes that no indication regarding the allowability of the subject matter of claims 1, 3, 7-10, 13, and 14 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
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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