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 “each of the parallel tracks being assigned to a portion of a transverse profile of the milling profile, wherein the transverse profile is transverse to a longitudinal direction of the milling profile” as in claim 1, 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3, 11-12 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 as amended now recites in lines 1-5 that “a plurality of different receivers are configured to be jointly subjected to the pressure transmission fluid, or a plurality of supports for the different receivers are configured to be jointly subjected to the pressure transmission fluid”. However, the specification as filed is silent so as to any plurality of supports for the different receivers being configured to be jointly subjected to the pressure transmission fluid. The Examiner suggests deleting the “or a plurality of supports for the different receivers are configured to be jointly subjected to the pressure transmission fluid”. Further clarification is needed.
New Claim 11 recites in lines 3-4 that the “pressure transmission fluid” causes “translational motion of the at least one cutting blade away from or towards a face of the milling body”. However, the specification is silent as to any translational motion of the cutting blade being specifically “away from or towards a face of the milling body”. The Examiner suggests deleting the “away from or towards a face of the milling body”. Further clarification is needed.
New Claim 12 recites in lines 1-3 that the “clamping body is configured exert a force on the at least one cutting blade in a direction perpendicular to the plane of the translational motion”. However, the specification is silent as to any clamping body being configured exert a force on the at least one cutting blade in a direction perpendicular to the plane of the translational motion. Further clarification is needed.
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, 7-8,10-12 and 13 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 as amended, recites in lines 8-10 that at least one of the cutting plates “are configured to be pretensioned using a non-positive force for fixing in a respective receiver by at least one clamping body against an abutment stop”. However, it is unclear how exactly at least one of the cutting plates are pretensioned using non-positive force? In what sense these are “pretensioned using a non-positive force” or fixing in a respective receiver by at least one clamping body against an abutment stop? How is this usage of force, can also be catalogued as “pretension”. It is believed that because the term pretensioned, implies that there is no force being applied, then it is unclear how can something be pretensioned using a non-positive force? What exactly is catalogued as a “non-positive force”? How is this force considered non-positive if this force is being “used” for fixing in a respective receiver? Furthermore, it is now unclear if 1) there is an existing force that holds the cutting plates against one clamping body? Or 2) if the clamping body the one that actually fixes the cutting plates? Or 3) if there is an additional force being applied to further clamp the cutting plates? The way these claimed limitations have been set forth renders the scope of the claim unclear. Further clarification is needed.
Claim 1 recites in line 18 “a portion of a transverse profile of the profile”, which renders the claim indefinite, as it is unclear in relation to what is this portion of the profile, considered “transverse”. Further clarification is needed.
Claim 7 recites in line 4 the phrase “rotating in opposing directions” renders the claim indefinite as it is unclear in relation to what are these directions are being opposing? What is the feature that is being rotating in opposing directions, is it the screw connection or the clamping bodies? Further clarification is needed.
Claim 8 recites in lines 9-10 “the respective adjusting means” which has insufficient antecedent basis, as no “respective adjusting means” has been previously set forth. Respective to what? Further clarification is needed.
Claim 12 recites in lines 2-3 “a direction perpendicular to the plane of the translational motion”. However, there is insufficient antecedent basis for “the plane of the translational motion”, as no “plane of the translational motion” has been previously set forth in the claims. Furthermore, it is unclear from where to where is this “direction perpendicular to the plane” is being taken from and where is this plane defined. Further clarification is needed.
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) 1-4, 7-8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brieden et al. US 2014/0377022 (hereafter—Brieden--).
In regards to claim 1, Brieden discloses (Figures 1-7c) a device (20) capable of being used for milling a milling profile, of a rail track intended for rail-bound vehicles, the profile having a running surface and a side surface, wherein the device is movable in a feed direction along a longitudinal extent of the milling profile, the device comprising: at least one milling body (31), that is capable of being driven in a rotationally movable manner about an axis of rotation (RW), and a plurality of cutting plates (10) attached to the at least one milling body (31), wherein at least one of the cutting plates (10) is capable of being pretensioned using a non-positive force (in the same way as presented by Applicant and in view of the 112 2nd above, the force being the force already established by clamping bodies 55) for fixing in a respective receiver (25.1) by at least one clamping body (55) against an abutment (abutment of 55) as a stop, wherein the at least one of the cutting plates (10) are capable of being deflected in the respective receiver (25.1) in a radial direction by an adjusting means (41) and are capable of being fixed in an adjusted position by the clamping body ( by further screwing screws 55 into cutting plates 10) and wherein the adjusting means (41) is configured to be movable and/or deformable by a pressure transmission fluid; wherein the plurality of cutting plates (10) are arranged in parallel tracks (refer to the tracks where cutting plates on 10 are disposed at, which as seen in Figure 6 for example, has parallel walls), each of the parallel tracks being assigned to a portion of a transverse profile of the milling profile (in the same way as presented by Applicant, see Figure 6 where the parallel tracks are assigned to a portion of a transverse profile of the milling profile); wherein the transverse profile is transverse to a longitudinal direction of the milling profile, and wherein the plurality of cutting plates (10), that are arranged in adjacent parallel tracks have an offset to one another in a peripheral direction of the milling body (see Figures 3 and 7c).
In regards to claim 2, Brieden discloses the device as claimed in claim 1, Brieden also discloses that each cutting plate (10) has a radial or axial orientation in the receiver (25.1) with a main axis, and each cutting plate (10) with a surface facing away from a cutting edge of the cutting plate is positioned on a support (within 25.1) which that is movably coupled (in the same way as presented by Applicant) to the adjusting means (41).
In regards to claim 3, Brieden discloses the device as claimed in claim 1, Brieden also discloses that a plurality different receivers (25.1) are capable of being jointly subjected to the pressure transmission fluid (since all the receivers and supports within receivers are simultaneously subjected to the pressure transmission fluid via 40 and 42).
In regards to claim 4, Brieden discloses the device as claimed in claim 1, Brieden also discloses that at least one adjustable displacement body (60) that acts on the pressure transmission fluid for setting a fluid pressure of the pressure transmission fluid.
In regards to claim 7, Brieden discloses the device as claimed in claim 1, Brieden also discloses that wherein the clamping bodies (61) are adjustable by a screw connection (62), that is configured either for fixing or for disconnecting the clamping bodies (61) by rotating in opposing directions.
In regards to claim 8, Brieden discloses the device as claimed in claim 1, Brieden also discloses a method for adjusting individual cutting plates of the device relative to the respective receiver (25.1) of the device, the method comprising: deflecting adjusting means (41) is deflected by a pressure transmission fluid, changing a fluid pressure of the pressure transmission fluid using a displacement body (60) acting as a displacer, thereby the adjusting means (41) is adjusted until a cutting edge (of 10) of the respective cutting plate (10), that faces away from the adjusting means (41), has reached a desired reference position, wherein a plurality of cutting plates (10) are moved with a predetermined force by the respective adjusting means (41) against a reference body (55 or 33).
In regards to claim 10, Brieden discloses the method as claimed in claim 8, Brieden also discloses that the reference body (33) is configured to be convex, and in a defined reference position relative to the device (20) the reference body (33) serves as an abutment for at least the individual cutting plates (10) and in that the reference body (33) has a plurality of recesses (35.1, 35.2) for a tool for actuating the clamping body (55).
Allowable Subject Matter
Claims 11-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph and 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.
Response to Arguments
Rejections not based on Prior Art
In view of Applicant's amendments, the previous 35 U.S.C. § 112 rejection of claims 1-10 has been withdrawn.
In view of Applicant's amendments, a new rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph of claims 3, 11-12 and 13.
In view of Applicant's amendments, a new rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claims 1-4, 7-8,10-12 and 13 has been incorporated as aforementioned.
Rejections based on Prior Art
Applicant's arguments filed 04/07/2026 regarding the Wolf US 3,694,880 reference, have been fully considered and in light of Applicant's amendments, the previous rejection under 35 USC § 102 over Wolf US 3,694,880 has been withdrawn.
However, Applicant's arguments filed 04/07/2026 regarding the rejection under 35 USC § 102 over Brieden et al. US 2014/0377022 (hereafter—Brieden--) have been fully considered but they are not persuasive.
Applicant argues on pages 9-10, that Brieden fails to disclose that the cutting plates are configured to be pretensioned using a non-positive force by at least one clamping body against an abutment, because in Brieden a fluid in cavity 40.1 exerts pressure on thin wall 41 and the thin wall pushes 41 against the cutter 10, while the closure means 60 is pushed away from the cutter b y the fluid in cavity 40.1. Although Applicant’s arguments are not clearly understood, it is noted that in Brieden at least one of the cutting plates (10) is capable of being pretensioned using a non-positive force (in the same way as presented by Applicant and in view of the 112 2nd above, the force being the force already established by clamping bodies 55) for fixing in a respective receiver (25.1) by at least one clamping body (55) against an abutment (abutment of 55) as a stop. Since what is being catalogued as “pretensioned using a non-positive force” has not been clearly defined by either the claims or the specification as filed, Brieden’s tool is capable of performing the function. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Applicant’s argument in that Brieden’s thin wall 41 do not move the cutters 10 against screws 55 but away from screws 55, as in annotated Figure 6 below, note that when fluid is applied to cavity 40.1, to an extent so as to deflect thin wall 41, thin wall 41 is being deflected so as to further clamp cutters 10 towards screws 55. Cutters 10 are being squeezed in receptacle 25.1 between wall 41 and screws 55. Thus, the Examiner’s interpretation is not precluded.
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Conclusion
THIS ACTION IS MADE FINAL. 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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