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 without traverse of Invention II (Claims 7-12) in the reply filed on 01/29/2026 is acknowledged. Claims 1-6 are withdrawn. Claims 7-12 are examined.
Claim Interpretations
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:
Claim 7 - “holding unit” read as a unit [means] for holding.
Claim 7 - “grinding unit” read as a unit [means] for grinding.
Claim 7 – “transporting mechanism” read a mechanism [means] for transporting.
has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use generic placeholders:
Claim 7 – “unit”
Claim 7 – “unit”
Claim 7 – “mechanism”
coupled with functional language:
“for holding”
“for grinding”
“for transporting”
without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
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) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Corresponding structure is found in [0053].
Corresponding structure is found in [0038].
Corresponding structure is found in [0022].
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 9-10 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 pre-AIA the applicant regards as the invention.
Claim 9 is indefinite because in lines 5-7 of the claim, the claim recites “after the grinding wheel is replaced in a state in which the replacement of the grinding wheel is possible.” The use of the term “possible” is contradictory and open-ended and broader with respect to the term “necessary” recited in claim 7. Since claim 9, in line 5, recites “after the grinding wheel is replaced”, it was determined that the replacement of the grinding wheel was necessary as recited in the last line of claim 7. Therein, the use of the term “possible” in which the replacement of the grinding wheel is possible is contradictory and unclear with respect to the limitations previously recited in claim 7 because there cannot be a state in which replacement of the wheel is possible (i.e., replacement may or may not happen), once it is determined that the replacement of the wheel is necessary (i.e., will happen). Due to the ambiguity and lack of clarity of the limitation, the metes and bounds cannot be determined of the claim, which renders the claim indefinite.
Claim 10 is also indefinite for the same reasons as stated above for claim 9, with respect to the use of the term “possible” recited in the last two lines of the claim (see rejection above).
Allowable Subject Matter
Claim 7 is allowable over the prior art of record. The closest prior art of record is: Nukui et al. (U.S. 6,332,834).
Regarding claim 7, Nukui et al. discloses a grinding method for sequentially grinding a plurality of workpieces by using a grinding apparatus (i.e., a method for grinding a workpiece 23 using a grinding apparatus and subsequently grinding a second workpiece afterwards, Col. 1, lines 5-10), the grinding apparatus including a holding unit (24) that has a chuck table (47) and holds a workpiece (23) by the chuck table (as shown in Fig. 1 and Fig. 3), a grinding unit (25) that has a spindle (60) fitted with a grinding wheel and grinds, by the grinding wheel, the workpiece held by the holding unit (i.e., grinding wheels 27 or 28 are used to grind the workpiece 23, as shown in Fig. 3), a transporting mechanism (31 and 34, as shown in Fig. 1) that has a holding part capable of holding the workpiece (i.e., the workpieces 23 are transported by the robot arm 31, Col. 6, lines 1-6), and loads the workpiece onto the holding unit (i.e., workpiece holding unit 24 comprising the table 47, Col. 6, lines 5-6) and unloads the workpiece from the holding unit (i.e., robot arm 34 unloads, Col. 6, lines 18-26), a first table (29, Fig. 1) that holds the workpiece to be loaded onto the holding unit (24), and a second table (32) that holds the workpiece having been unloaded from the holding unit (24, as shown in Fig. 1, Col. 6, lines 18-26), the grinding method comprising:
a step of grinding, by the grinding wheel, a first workpiece held by the holding unit (24, grinding, Col. 7, lines 10-38);
a step of, after the first workpiece is ground by the grinding wheel, transporting the first workpiece held by the holding unit to the second table by the transporting mechanism (i.e., the workpiece 23 is transported from the holding unit 24 to the second table 32 via arm 34, Col. 6, lines 18-26), transporting a second workpiece (i.e., a second workpiece 23) held on the first table (29) to the holding unit (24) by the transporting mechanism (i.e., robot arm 31), and transporting a third workpiece (i.e., a third workpiece 23) to the first table (29) by the transporting mechanism (arm 31, which would be located in cassette 30, as shown in Fig. 1);
a step of determining whether or not replacement of the grinding wheel fitted to the grinding unit is necessary (i.e., controller 201 determines and warns operator to replace the grinding wheels 27 or 28, Col. 8, lines 1-8).
However, Nukui et al. fails to disclose or suggest, as part of the step of determining whether or not replacement of the grinding wheel is necessary, of a state in which the holding unit is holding the second workpiece, the second table is holding the first workpiece, and the first table is holding the third workpiece; along with a step of making the holding part of the transporting mechanism hold the second workpiece held by the holding unit, when it is determined that the replacement of the grinding wheel of the grinding unit is necessary in the step of determining whether or not the replacement of the grinding wheel is necessary.
Claims 8 and 11-12 would be allowable due to their dependency on claim 7.
Claims 9-10 would be allowable if the 112 rejections are overcome, due to their dependency on claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J ZAMORA ALVAREZ whose telephone number is (571)272-7928. The examiner can normally be reached Monday-Friday 7:30 am- 5:00 pm EST alternating Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, COURTNEY HEINLE can be reached at (571)270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J ZAMORA ALVAREZ/Primary Examiner, Art Unit 3745 03/12/2026