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 .
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 “axial guiding means (line 39 claim 1); “pivoting control means” (line 49, claim 1); “translation control device” (line 51, claim 1); “pusher elements” (line 52, claim 1); “the guiding surfaces corresponding to the tool holders having a shape of a portion of a helix whose axis coincides with the pivoting axis of said tool holder” (lines 59-60, claim 1); “helix shaped guiding surface” (line 65, claim 1); “phase shift device” (line 68, claim 1); “a system to measure an angular position” (lines 7-8, claim 2); the entirety of claim 4; “helix shaped guiding surface” (line 3, claim 6); “elements” (line 4, claim 7); the entirety of claim 8; and the “linear actuator mounted in a set back manner in relation to the frame” (lines 3-4, claim 10) 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 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.
Claim 8 is 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. The specification as filed is silent as to have control rods “having an axial end that abut a non-rotary spool supported a pair of further bearings that mate with the rotary control bush, axial movement of the control rods biases the non-rotary spool and the pair of further bearings such that the rotary control bush axially slides on a shank of said rotor and rotates therewith”. The only instance of the describing any relationship between the control rods and the non-rotary spool is in page 5, lines 15-18 of Applicant’s specification as filed:
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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 1-11 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.
As a general note, the claims appear to be generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Proper clarification is needed.
Claim 1, line 39 “axial guiding means”; line 49 “pivoting control means”; lines 50-51 “translation control device”; line 52 “pusher elements”; line 68-69 “phase shift device”; claim 3 “numerical control means”; and claim 4 “means that allow a complete change of central section” and “receiving axial guiding means”; and claim 7 “elements” 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. It is unclear what exactly is the structure that defines each of: the axial guiding means; the pivoting control means; the translation control device; the pusher elements; the phase shift device; the numerical control means; the means that allow a complete change of central section and receiving axial guiding means. 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 1 recites in:
Line 29 the term “can” which renders the claim indefinite as it is unclear if the machining unit is indeed carrying machine tools or not. Further clarification is needed.
line 57-58 “said guiding surface being located on the tool holder and the corresponding pushing surface”. However, it is unclear to what this pushing surface is corresponding to. Further clarification is needed.
Lines 59-60 “the guiding surfaces corresponding to the tool holders having a shape of a helix portion whose axis coincides with the pivoting axis of said tool holder”. It is unclear if 1) every guide surfaces of the tool holders has the shape of a helix portion or 2) the tool holders have the shape of a helix portion. Fourth, what exactly is catalogued as “a shape of a helix portion”? Is it that either the guide surface is helical? Or that the tool holder is helical? The way these claim limitations have been set forth is overall unclear and confusing. Further clarification is needed.
Lines 65-66 “the helix shaped guiding surface”. Consistent language is needed throughout the claims as it is unclear if the helix shaped guiding surface, the same as the guiding surfaces corresponding to the tool holders having a shape of a portion of a helix, or not. Further clarification is needed.
Lines 27-28 “the rotary control bush being axially movable by direct axial movement of the translation control means and rotatably driven by a phase shift device to rotate to two, three or four predetermined angular positions about the central rotational axis to make the machine tools plunge”. First, it is unclear what is meant by “direct axial movement”. Second, the translation control means for moving the control bush are not defined in the claim to such extent so as to clearly understand what exactly is the structure that moves the control bush axially. Third, it is unclear what exactly this phase shift device is and fourth, it is unclear in relation to what are these two, three or four predetermined angular positions are taken from. Angular positions in relation to what? What determines this predetermined angular position.
Claim 2 recites in lines 6-7 “each of the first and the second drive motors being equipped with a system to measure an angular position thereof”, it is unclear what exactly this system is and in relation to what this angular position is taken from. The term “thereof” renders the claim indefinite as it is unclear to what exactly “thereof” pertains to. Is this in relation to each position of the motors, or each position of the tools (as in claim 1, lines 69-70)?
Claim 3 recites in lines 3-4 “ensure a perfectly synchronous rotation, but also controls any angular phase shift”. However, the metes and bounds of how exactly a “perfectly synchronous rotation” is accomplished is unclear. Also, it is unclear how a synchronization between drive motors is being done while also the controlling of any angular phase shift between drive motors. It is believed that this intended performance can be either synchronized or unsynchronized. Further clarification is needed.
Claim 4 recites in lines 1 and 4-5 “A machining unit according to claim 1” and “allowing easy replacement of said precision bearings and adaptation of other guiding systems”. First, it is unclear if “a machining unit according to claim 1” is the same “rotary head machining unit” or not. Consistency throughout the claim is needed, for clarity purposes. Second, it is unclear what catalogues an “easy” replacement and “adaptation”. Is this adaptation, actually taken place or not? Further clarification is needed.
Claim 5 recites in line 3, “a hexagon located on an end outside of the rotor”. The way these limitations have been set forth is unclear. Does this mean that the outer circumference of the rotor is hexagonal in shape so as to allow mounting various cutting tool carriers? Further clarification is needed.
Claim 6 recites in line 2 “a lever-shaped rear section of each of the control levers”. The way these limitations have been set forth is unclear. How a control lever also has a lever-shaped rear section? What defines a “lever-shaped” rear section? Further clarification is needed. “The helix shaped guiding surface” in line 3 is unclear. Consistent language is needed throughout the claims as it is unclear if the helix shaped guiding surface, the same as the guiding surfaces corresponding to the tool holders having a shape of a portion of a helix, or not. Further clarification is needed.
Claim 7 recites in lines 3-4 “the axial play being adjusted with elements”. There is insufficient antecedent basis for “the axial play”, since no axial play has been previously introduced. Axial play of what? What exactly defines these “elements”? What is the structure of these “elements”?
Claim 8 recites in lines 2-8 control rods “having an axial end that abut a non-rotary spool supported a pair of further bearings that mate with the rotary control bush, axial movement of the control rods biases the non-rotary spool and the pair of further bearings such that the rotary control bush axially slides on a shank of said rotor and rotates therewith”. The entirety of the claim is unclear. Is the axial end the one that supports a pair of further bearings? Is the spool the one that supports a pair of further bearings? Further clarification is needed.
Claim 10 recites in lines 3-4 that a linear actuator is mounted “in a set back manner in relation to the frame”. However, it is unclear what exactly defines a “set back manner”. Further clarification is needed.
Response to Arguments
Applicant’s arguments filed on 06/09/2026 with respect to claims 1-11 have been carefully and fully considered, and in light of Applicant’s amendments, a new ground(s) of rejection 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, for claim 8 and 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 have been incorporated as aforementioned, for claims 1-11; have been incorporated as aforementioned.
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 NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
Examiner interviews are available via telephone, 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, Sunil K Singh 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.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
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