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.
Claim limitation “means for detachably fixing of said portable machining device on said moveable vertical chassis” has been interpreted under 35 U.S.C. 112(f) because it uses a non-structural term “means for” coupled with functional language “fixing” without reciting sufficient structure to achieve the function. Furthermore, the non-structural term is not preceded by a structural modifier.
Since this claim limitation invokes 35 U.S.C. 112(f) claim 1 is interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) limitation: as discussed in ¶¶36-38 of the publication:
said means for detachable fixing of said portable machining device on said vertical chassis comprise:
- a peripheral shoulder provided on said vertical chassis matching the
periphery of the machining device so as to form a housing to receive said machining device,
- pivoting locking latches mounted on said peripheral shoulder and configured to be able to move from a first position in which the machining device can be freely inserted in said receiving housing
formed by said peripheral shoulder to a second position in which the pivoting locking latches are pivoted and are inserted into matching orifices provided in the machining device in order to ensure that said machining device is held against the peripheral shoulder of said chassis which prevents the dislodgement of said machining device.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112(f) or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f).
For more information, see Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim element “means for moving said machining head” is a means (or step) plus function limitation that invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. As seen in ¶76 of the publication applicant only mentions that the machining robot (or in the claims the machining head) is discussed in application FR2000758 but this application has not been provided and thus no structure has been provided for this “means”
Applicant is required to:
(a) Amend the claim so that the claim limitation will no longer be a means (or step) plus function limitation under 35 U.S.C. 112(f); or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function 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 so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant is required to 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.
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 1-12 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 discussed above, in claim 1 the phrase “means for moving said machining head” is an improper invocation of 112(f) and thus it is unclear what structure applicant is attempting to invoke.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not disclose the invoked structure of the “means for detachable fixing of the portable machining device”.
The closest prior art is U.S. Patent Application Publication No. 2021/0001439 which discloses a machine tool for machining a piece of wood comprising:
a first module (2), referred to as the positioning module, comprising a frame supporting a horizontal table (26) for receiving a piece of wood to be machined, referred to as the positioning table, which extends in a direction, referred to as the longitudinal direction, and configured to be able to at least partially support said piece of wood,
a second module, referred to as the machining module, comprising:
a frame (7) arranged longitudinally facing said frame of said positioning module,
a digitally-controlled portable machining device (3) comprising a machining head (at 36) fitted with a machining tool (53-58) and means for moving said machining head (71) on at least one horizontal axis,
a vertical chassis (30, 33, 34) mounted to be movable with respect to said frame in translation on an axis parallel to said horizontal movement axis, and in rotation with respect to a vertical axis.
However it does not disclose and means for moving said machining head on at least one horizontal axis and a vertical axis, only the horizontal axis. Nor does it disclose the means for fixing as invoked.
Another close prior art is U.S. Patent No. 10,654,189 which discloses a machine tool for machining a piece of wood comprising:
a first module, referred to as the positioning module, comprising a frame (11) supporting a horizontal table (41) for receiving a piece of wood to be machined, referred to as the positioning table, which extends in a direction, referred to as the longitudinal direction, and configured to be able to at least partially support said piece of wood,
a second module, referred to as the machining module, comprising:
a frame (10) arranged longitudinally facing said frame of said positioning module,
a portable machining device (25) comprising a machining head fitted with a machining tool (61) and means for moving said machining head on at least one horizontal axis (via 12) and a vertical axis (via 24),
a vertical chassis (51) mounted to be movable with respect to said frame in translation on an axis parallel to said horizontal movement axis, and in rotation with respect to a vertical axis.
While it does not disclose that the portable machining device is digitally controlled it would have been obvious to do so. However it also does not disclose the means for fixing as claimed.
A final example is U.S. Patent No. 5,524,328 which discloses a machine tool for machining a piece of wood comprising:
a first module, referred to as the positioning module, comprising a frame supporting a horizontal table (16) for receiving a piece of wood to be machined, referred to as the positioning table, which extends in a direction, referred to as the longitudinal direction, and configured to be able to at least partially support said piece of wood,
a second module, referred to as the machining module, comprising:
a frame (10) arranged longitudinally facing said frame of said positioning module,
a digitally-controlled portable machining device (14) comprising a machining head fitted with a machining tool and means for moving said machining head on at least one horizontal axis (via 22) and a vertical axis (via 23),
a vertical chassis (13) mounted to be movable with respect to said frame in translation on an axis parallel to said horizontal movement axis, and in rotation with respect to a vertical axis. U.S. Patent Nos. 7,272,882 and 6,502,002 are other examples of similar devices. However they do not disclose the invoked structure of the means for fixing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Katcoff whose telephone number is (571)270-1415. The examiner can normally be reached M-Th: 8-4, Fri: Flex.
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/Matthew Katcoff/ Primary Examiner, Art Unit 3725
11/03/2025