DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “milling member” and “actuation member” throughout claims 1-10.
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 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 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites in:
Lines 1-2 and 6-7 “a profile of a longitudinal track element” and “a profile of a track member”. The metes and bounds of the claim are unclear as it is unclear what exactly the intended use of the milling apparatus is. Is it configured to mill a “profile of a longitudinal track element”? or “a profile of a track member”? Further clarification and consistency throughout the claims is needed.
Lines 7-9 “the plurality of blade carriers being rotated together with the milling member so as to follow individual track paths that correspond to a position along a width of the longitudinal profile”. The metes and bounds of the claim are unclear as it is unclear, what exactly is catalogued as individual track paths “that correspond to a position along a width of the longitudinal profile”? Correspond, in what sense? Where exactly this “position along a width of the longitudinal profile” is? From where to where is this “width” defined at? Furthermore, there is insufficient antecedent basis for “the longitudinal profile” as no “longitudinal profile” has been previously set forth in the claim. Further clarification is needed.
Lines 11-12 “each actuation member configured to radially deflect a respective one of the plurality of blade carriers in the first group”. However, the phrase “respective one of the plurality of blade carriers in the first group” renders the claim indefinite as it is unclear what element is catalogued as “a respective one”? In relation to what it is considered as “a respective one”? Further clarification is needed.
Lines 15-16 “a respective blade of the first group during engagement of the blade with the profile” is unclear. In relation to what is “a blade” considered as being “respective”? Respective to what? Which blade is considered as “the blade with the profile”? It is unclear to which profile “the profile” is referring to, as line 1 sets forth “a profile of a longitudinal track element” and line 6” a profile of a track member”. Further clarification is needed.
Lines 19-20 “wherein the actuation member cyclically comes into contact with a respective inclined formation of the blade carrier”. It is unclear to which “actuation member” it is referring to that comes into contact with a respective inclined formation. It is also unclear what is considered as “a respective inclined formation”. Respective to what? Further clarification is needed.
Line 21 “a first angular position of the actuation member”. It is unclear what exactly is catalogued as a first angular position. Angular in relation to what? From where to where is this position defined at? What defines the angle of an “angular position”? It is also unclear to which of the actuation members it is referring to, as the claim introduces a “plurality of actuation members”. Further clarification is needed.
Line 23 “the profile along a first track path” which renders the claim indefinite as it is unclear to which profile “the profile” is referring to, since line 1 sets forth “a profile of a longitudinal track element” and line 6 “a profile of a track member”. Furthermore, it is unclear what exactly is being defined as “a first track path”. From where to where is this “first track path” taken at. Further clarification is needed.
Line 23 “a second angular position of the actuation member”. It is unclear what exactly is catalogued as a second angular position. Angular in relation to what? From where to where is this position defined at? What defines the angle of an “angular position”? It is also unclear to which of the actuation members it is referring to, as the claim introduces a “plurality of actuation members”. Further clarification is needed.
Line 26 “the profile along the first track path” which renders the claim indefinite as it is unclear to which profile “the profile” is referring to, since line 1 sets forth “a profile of a longitudinal track element” and line 6 “a profile of a track member”. Furthermore, it is unclear what exactly is being defined as “the first track path”. From where to where is this “first track path” taken at. Further clarification is needed.
Claim 2 recites in line 3 that the second group of the plurality of blade carriers “are arranged in a non-movable manner on the milling member”. However, it is unclear in relation to what are these blade carriers considered to be “non-movable manner”. Since the milling member rotates, then because the blade carriers are disposed on the milling member, then the blade carriers are movable with the milling member. As such, the metes and bounds of the claim are unclear.
Claim 4 the phrase “associated with” in lines 5 and 8 renders the claim indefinite as it is unclear how exactly the first track path is associated with a running face of the transverse profile and how the second track path is associated with a lateral and/or medial edge region of the transverse profile. Additionally, it is unclear what exactly is a running face of the transverse profile. Further clarification is needed.
Claim 7 line 3 the phrase “cam-like formation” renders the claim indefinite as it is unclear what the metes and bounds of something that is cam-like, are. Is it a cam or not? Further clarification is needed. Line 5 recites “chip-removing processing processing”, the double “processing processing” is unclear. Further clarification is needed.
Claim 8 line 2 the phrase “cam-like formation” renders the claim indefinite as it is unclear what the metes and bounds of something that is cam-like, are. Is it a cam or not? Further clarification is needed.
Claim 9 the phrase “can be” renders the claim indefinite as it is unclear if the plurality of actuation members are actually being adjusted independently of each other, or not. Further clarification is needed.
Claim 10 recites in lines 7-8 Line 7 “produce different transverse profile geometries of the profile”. However, it is unclear in relation to what is this profile considered “transverse”. What are “transverse profile geometries” of the profile? Further clarification is needed.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Response to Arguments
Rejections not based on Prior Art
In view of Applicant's amendments, a new 35 U.S.C. § 112 rejection of claims 1-10 has been incorporated as aforementioned. The previous 35 U.S.C. § 112 rejections of claims 2, 4, 7, 8-9 and 10 were not addressed and thus are still deemed proper.
Rejections based on Prior Art
In view of Applicant' s amendments, the previous 35 U.S.C. § 102 rejection of claims 1-10 has been withdrawn.
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.
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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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