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 .
Election/Restrictions
Applicant's election with traverse of Group I and Species of Figures 1-3 with 4-6 and 11 in the reply filed on 01/19/2026 is acknowledged.
Claims 5, 12-15, 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method of machining, Group II and nonelected Species of Species of Figures 1-3 with 7-8 and 11; which has a specific coolant discharger shown in Figures 7-8; Species of Figure 9, 10 and 11; which has a specific coolant discharger shown in Figures 9-10; Species of Figure 12; which has a specific coolant discharger shown in Figure 12 with specific second nozzle 50; Species of Figure 13; which has a specific coolant discharger shown in Figure 13 with specific second nozzle 50; Species of Figure 16; which has a specific coolant discharger 40 with specific second nozzle 50 and specific workpiece holder; Species of Figure 17; which has a specific coolant discharger 40 with specific second nozzle 50 and specific workpiece holder; Species of Figure 18; which has a specific coolant discharger 40 with specific nozzle support member 5 and specific workpiece holder; Species of Figure 19; which has a specific coolant discharger 40 with specific nozzle support member 5 and specific workpiece holder; Species of Figure 20; which has a specific coolant discharger 40 with specific
nozzle support member 5 and specific workpiece holder; Species of Figure 21; which has a specific coolant discharger 4 and spacer 71 with specific nozzle support member 5 and specific workpiece holder; Species of Figure 22; which has a specific coolant discharger 40 and spacer 71 with specific nozzle support member 5 and specific workpiece holder; Species of Figure 23; which has a specific coolant discharger 4 with specific nozzle support member 5 and specific workpiece holder; Species of Figure 24; which has a specific coolant discharger 40 with specific nozzle support member 5 and specific workpiece holder; Species of Figure 25; which has a specific coolant discharger 40 with specific nozzle support member 5 and specific workpiece holder; Species of Figure 27; which has a specific coolant discharger 40 with specific nozzle support member 5 and specific workpiece holder;, there being no allowable generic or linking claim.
Applicant timely traversed the restriction (election) requirement in the reply filed on 01/09/2026. The traversal for the restriction among groups and species is on the ground(s) that “the claims to the present invention appear to be part of an overlapping search area” and thus “search and examination of the entire application would not place a serious burden on the Examiner”. This is not found persuasive.
MPEP Section 808 states:
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . .
The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. On Pages 2 and 6 of the restriction requirement mailed on 11/21/2025, Examiner noted that, at the very least, that 1) each group as claimed has a separate classification (see page 2, section 2) and 2) different areas of search, search queries and search strategies would be necessary to examine the different groups as claimed. Thus, burden has been properly established and the Restriction requirement is still deemed proper and is therefore made FINAL.
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) 1-3, 10 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/092879 (hereafter—WO’879--).
In regards to claim 1, WO’879 discloses a coolant discharger (Figures 1 and 4) comprising: a rotator (1) that is capable of being rotatable about a rotation axis (J) together with a workpiece and that has a through hole extending along the rotation axis; a fluid passage (101/81) provided in the through hole to supply a coolant toward the workpiece; and a nozzle (40/60) connected to the rotator (1) to be connected to the fluid passage to discharge the coolant from the nozzle toward the workpiece in a discharging direction away from the rotation axis, at least a part (40) of the nozzle being movable along the rotation axis (see Figures 3 and 4).
In regards to claim 2, WO’879 discloses the coolant discharger according to claim 1, WO’879 also discloses that the nozzle (40/60) is capable of discharging coolant toward an inner surface of the workpiece having a cylindrical structure.
In regards to claim 3, WO’879 discloses the coolant discharger according to claim 1, WO’879 also discloses that the nozzle (40/60) is rotatable about the rotation axis together with the rotator (1).
In regards to claim 10, WO’879 discloses a workpiece holder (100) comprising: the coolant discharger of claim 1, wherein the rotator (1) comprises a shaft having the through hole, and a workpiece holding member (10) configured to hold the workpiece.
In regards to claim 11, WO’879 discloses workpiece holder according to claim 10, WO’879 also discloses that the at least a part of the nozzle is movable along the rotation axis relative to the shaft and the workpiece holding member (10).
Allowable Subject Matter
Claims 4, 6-9, 16-17 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The Examiner reasons for indicating allowable subject matter will be given once the Application is in condition to be allowed.
Conclusion
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