DETAILED ACTION
The following is a Final Office Action in response to the Amendment/Remarks received on 17 December 2025. Claims 1-6 have been amended. Claims 1-6 are pending in this application.
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 .
Response to Arguments
Applicant's arguments, see Remarks, pg. 4, filed 17 December 2025 with respect to the Examiner’s claim interpretation have been fully considered and are persuasive in light of the claim amendment filed on 17 December 2025. Claims 1-6 are no longer interpreted for the rationale set forth in the Non-Final Office Action (pgs. 2, paragraph 2 - pg. 4, paragraph 7) mailed on 17 September 2025.
Applicant's arguments, see Remarks, pg. 4, filed 17 December 2025 with respect to rejected claims 1-6 under 35 U.S.C. 112(b) have been fully considered but they are not persuasive.
With respect to the Applicant’s argument,
Applicant amends claim 1 to recite "wherein the effective diameter is defined by JIS or ISO." See Specification at IL 50 ("set the compensation amount depending on the accuracy of the industrial standards such as JIS and ISO by setting the compensation amount of the effective diameter of the circle to be machined").
Applicant submits that the claims, as presented herein, fully satisfy the requirements of 35 U.S.C. § 112(b). (see Remarks, pg. 4, paragraphs 5-6)
The Examiner respectfully disagrees.
U.S. Patent Publication No. 2024/0310807 A1 (instant application) discloses:
In the example shown in FIG. 6, when the compensation amount is +150 to 0 (μm) as in the example of FIG. 5, for example, the setting of the compensation amount of the effective diameter makes the diameter of the circle to be machined 43 larger than the diameter of the circle to be machined 42 after the tool diameter compensation. Specifically, when the compensation amount is set in the machining program, the cutting tool 31 is disposed radially outward of the workpiece than the position of the cutting tool after the tool diameter compensation. (pg. 4, par. [0060]
Thus, the numerical control device 2 of the present embodiment can set the compensation amount depending on the accuracy of the industrial standards such as JIS and ISO by setting the compensation amount of the effective diameter of the circle to be machined with the setting unit 212. (pg. 5, par. [0061])
Thus, the numerical control device 2 can easily set the compensation amount of the effective diameter of the circle to be machined, so that the threading using the compensation amount of the effective diameter of the circle to be machined can be performed within the tolerance of the standard such as JIS or ISO. (pg. 4, par. [0070])
Claim 1 recites:
“wherein the effective diameter is defined by JIS or ISO” in line 10
The specification discloses a compensation amount of an effective diameter of a circle is characterized by standards, such as JIS or ISO which does not define the actual “effective diameter”. Further, the Examiner emphasizes the newly presented amendment is a broad characterization of the limitation “effective diameter” by use of the limitations of JIS and ISO which does not clearly define the limitation, specifically the term “effective” is not currently defined by the claims (i.e. JIS or ISO) and the specification does not provide a standard for ascertaining the requisite degree wherein one of ordinary skill in the art would be reasonably apprised of the scope of the invention. Hence, the Applicant’s argument is found unpersuasive.
Applicant’s arguments, see Remarks, pg. 5, filed 17 December 2025, with respect to rejected claims 1-6 under 35 U.S.C 101 have been fully considered and are persuasive in light of the claim amendment filed on 17 December 2025. The rejections of claims 1-6 have been withdrawn.
Claim 1 stands objected to and claims 1-6 stand rejected under 35 U.S.C. 112(a) and 112(b) as set forth below.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 includes the abbreviations “JIS or ISO” in line 10. There is no reference to the definitions of the abbreviations in the claim. All abbreviations should be spelled out in the claim to avoid any question of ambiguity. For the purpose of examination, the limitations of “JIS” or “ISO” have been interpreted as Japanese Industrial Standards and International Organization for Standardization, respectively.
Appropriate correction is required.
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 1-6 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.
U.S. Patent Publication No. 2024/0310807 A1 (instant application) discloses:
In the example shown in FIG. 6, when the compensation amount is +150 to 0 (μm) as in the example of FIG. 5, for example, the setting of the compensation amount of the effective diameter makes the diameter of the circle to be machined 43 larger than the diameter of the circle to be machined 42 after the tool diameter compensation. Specifically, when the compensation amount is set in the machining program, the cutting tool 31 is disposed radially outward of the workpiece than the position of the cutting tool after the tool diameter compensation. (pg. 4, par. [0060]
Thus, the numerical control device 2 of the present embodiment can set the compensation amount depending on the accuracy of the industrial standards such as JIS and ISO by setting the compensation amount of the effective diameter of the circle to be machined with the setting unit 212. (pg. 5, par. [0061])
Thus, the numerical control device 2 can easily set the compensation amount of the effective diameter of the circle to be machined, so that the threading using the compensation amount of the effective diameter of the circle to be machined can be performed within the tolerance of the standard such as JIS or ISO. (pg. 4, par. [0070])
Claim 1 recites:
“wherein the effective diameter is defined by JIS or ISO” in line 10
In summary, the specification discloses a compensation amount of an effective diameter of a circle is characterized by the standards of JIS or ISO which do not define the actual “effective diameter”. The only support for the limitation of “wherein the effective diameter is defined by JIS or ISO” is found in the newly presented claim 1 filed on 17 December 2025 (i.e. the specification as originally filed does not support the newly amended claim 1 as filed on 17 December 2025).
Claims 2-6, dependent from claim 1, stand rejected under 35 U.S.C. 112(a) for the same rationale as set forth in claim 1.
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 1-6 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.
The term “effective” in claim 1 (line 5), claim 2 (line 4), claim 4 (lines 4, 6, and 9), claim 5 (lines 2, 4, and 5), and claim 6 (line 10) is a relative term which renders the claims indefinite. The term “effective” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Hence, the limitations of “… diameter of the machining circle” in claim 1 (lines 5-6), claim 2 (lines 4-5), claim 4 (lines 4, 6-7, and 9), claim 5 (lines 3, 4-5, and 6), and claim 6 (line 10) have been rendered indefinite by use of the phrase “effective”.
Claims 2-6, dependent from claim 1, stand rejected under 35 U.S.C. 112(b) for the same rationale as set forth in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references are cited to further show the state of the art with respect to machining tools/systems.
U.S. Patent Publication No. 2012/0065769 A1 discloses a system and method for improving a tool tip path of a machine, such as a waterjet cutting machine, by testing and compensating for tool misalignment
U.S. Patent Publication No. 2020/0401115 A1 discloses a numerical controller, a CNC machine tool, a numerical control method, and a non-transitory computer readable medium recording a numerical control program.
U.S. Patent Publication No. 2021/0072724 A1 discloses a controller includes a storage unit storing a plurality of sets of recommended setting values or recommended setting ranges regarding parameters for controlling an axis of a machine tool or an industrial machine or for controlling a motor.
U.S. Patent Publication No. 2023/0158624 A1 discloses a tool measuring system, a control method, and a program wherein a cutting tool is easily measured.
U.S. Patent Publication No. 2023/0350375 A1 discloses a numerical control device and a control method that enable simple true circular processing.
U.S. Patent No. 5,076,744 discloses an improved screw cutting apparatus for use with a machining center arrangement and capable of performing a screw cutting job for a large diameter screw and/or taper screw or the like special screw in a highly simplified manner with superior precision and accuracy.
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 JENNIFER L NORTON whose telephone number is (571)272-3694. The examiner can normally be reached Monday - Friday 9:00 am - 5:30 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing 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, Robert Fennema can be reached at 571-272-2748. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER L NORTON/Primary Examiner, Art Unit 2117