DETAILED ACTION
Receipt is acknowledged of Applicant’s Response, dated 22 July 2026, which papers have been made of record.
Claims 1-20 are currently presented for examination.
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 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 1-20 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. Claim 1 has been amended to recite “the separation device in a first condition is configured to mechanically lock the passage between the storage space and the loader passage, and in a second condition is configured to allow the loader access to the tools of the setup unit” in lines 9-12. Applicant points to paragraphs [0011]-[0013] of the Specification for alleged support, however beyond saying that “in a first condition the separation device locks the passage between the storage space and the loader passage mechanically and thus avoids the access of persons to the loader passage in case the setup unit is not located in the storage space” the Specification does not appear to explain what structure of the separation device is specially made and adapted to perform the locking. MPEP 2163(I)(A) teaches that “a description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement.” The structure which is configured to perform the claimed locking is not adequately described in the Specification portions cited by Applicant in the Response.
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 1-20 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 “wherein a separation device is provided between the loader passage and the storage space, the separation device in a first condition is configured to mechanically lock the passage between the storage space and the loader passage, and in a second condition is configured to allow the loader access to the tools of the setup unit” at lines 9-12. It is unclear what structure of the separation device is capable of performing the locking function.
Claims 2-20 each depend from claim 1, and therefore are rejected or at least the reasons presented above with respect to claim 1.
Claim 7 recites “if the setup unit is arranged inside the storage space” at lines 3-4. To the best of the examiner’s understanding, the language following the conditional “if” is not always true, such that the claimed limitations may never occur. The examiner strongly recommends reciting “when” instead of “if,” as “when” conditions are understood to occur.
Claim 10 recites the pronoun “it” in line 4. It is difficult to determine which previously identified claim element is being referenced. Applicant could overcome this rejection by reciting the claim element in full each time they are to be referenced.
Claim 10 recites “if it is placed inside the interstice” at lines 4-5. To the best of the examiner’s understanding, the language following the conditional “if” is not always true, such that the claimed limitations may never occur. The examiner strongly recommends reciting “when” instead of “if,” as “when” conditions are understood to occur.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation “a sensor”, and the claim also recites “particularly a camera or a tactile sensor” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1, 3-5, 16-17, and 19
Claims 1, 3-5, 16-17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 7,547,270 to Mischler et al. (hereinafter “Mischler”).
Regarding claim 1, Mischler discloses a tool rack magazine (see Fig. 1) for a machine tool (10) for chip removing machining of metal workpieces, the tool rack magazine comprising: a tool holding device (device overall includes magazine 21) configured for holding tools (70), at least one setup unit (16, may be clamped to workpiece 15) that can be moved into and out of a storage space (enclosure 12 at opening 18) in the tool holding device (device), a loader (22) that can be moved in a second direction (in direction of arrow 4 in Fig. 1; see Col. 2, lines 23-31) inside a loader passage (see Fig. 1; interior space including magazine 21), the loader oriented transverse to a first direction (in direction of arrow 19), wherein the loader passage extends along the tool holding device (10) including the at least one setup unit (16), wherein a separation device (doors 64, 68) is provided between the loader passage (interior space including magazine 21) and the storage space (enclosure 12 at opening 18), the separation device (64, 68) in a first condition is configured to mechanically lock (see Col. 3, lines 34-44; doors understood to have interlocks when machine in operation) the passage between the storage space and the loader passage (see Fig. 1; doors are physically interspaced between passages), and in a second condition is configured to allow the loader access to the tools of the setup unit (doors 64, 68 can be opened/accessed when machine not in operation); and wherein the setup unit (16) is mobile and is configured to be moved out of the storage space and away from the magazine (see Fig. 1; setup unit shown out of machine).
Regarding claim 3, Mischler discloses the limitations of claim 1, and further Mischler discloses that the tool holding device (21) is configured to hold all tools in a horizontal orientation facing away from the loader passage (see Fig. 1; tools appear to be shown in a horizontal orientation).
Regarding claim 4, Mischler discloses the limitations of claim 3, and further Mischler discloses that the tool holding device (21) is configured to receive and store the tools in rows above one another (see Fig. 1; uppermost tools shown extending in a row positioned above lower row of tools 70).
Regarding claim 5, Mischler discloses the limitations of claim 4, and further Mischler discloses that removal passages (there is spacing between uppermost row of tools and lower groups of tools) are provided between the rows (see Fig. 1).
Regarding claim 16, Mischler discloses the limitations of claim 1, and further Mischler discloses that holding and support means (rails 45 and receiver 19; see Fig. 2) are provided in the storage space (enclosure 12 at opening 18) for exact positioning of the setup unit (16).
Regarding claim 17, Mischler discloses the limitations of claim 1, and further Mischler discloses that at least one position mark (any edge of the body 16 can be construed as a position mark) is arranged on the setup unit (16).
Regarding claim 19, Mischler discloses the limitations of claim 1. Mischler thus discloses a machining center (10) having the tool rack magazine (see Fig. 1) of claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 20
Claims 2 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mischler as applied to claim 1 above, and further in view of United States Patent 4,943,199 to Hillen (hereinafter “Hillen”).
Regarding claim 2, Mischler discloses the limitations of claim 1. Mischler does not explicitly disclose that its first tool holder receptacle means is adapted to hold a tool holder. Mischler appears to be silent regarding the supporting structure of its tool magazine (21).
However, it is conventional for tool magazines to have tool holders. Hillen teaches a tool storage apparatus for tools or tool units (see Col. 1, lines 47-52). Hillen teaches a tool magazine (2) having a plurality of rows (see Fig. 1) supporting a plurality to tool assemblies (14). The magazine includes a plurality of compartments (10) supporting the tool assemblies, which may include a tool (12) and a tool holder (13; see Fig. 3 and Col. 2, lines 61-67). Hillen teaches that each of the tool and the tool holder may have a circular cross section or a conical profile (see Fig. 3) and the tool unit (14) may be supported via a retaining ring (32) or an elastic cam (33).
It would have been obvious to one having ordinary skill in the art to modify the receptacle means taught by Mischler to support a conventional tool unit including a tool and tool holder, as taught by Hillen. (See MPEP 2143(1)(A)). The resulting device would predictably be capable of supporting a tool or a tool unit in a conventional manner. The securing mechanisms taught by Hillen can be used to support devices having circular cross sections (see Fig. 3), and the shape of the tools (70) taught by Mischler appear to also have circular cross sections (see Fig. 1). One having ordinary skill in the art would reasonably expect that the tool magazine taught by Mischler would be capable of supporting tools, tool holders, and tool units having similar cross sections as taught by Hillen, such that the device of Mischler would support a tool holder as claimed.
Thus, the combination of Mischler and Hillen teaches the limitations of claim 2.
Regarding claim 20, the combination of Mischler and Hillen teaches the limitations of claim 2, Mischler teaches that the tool holding device (21) is configured to hold all tools in a horizontal orientation facing away from the loader passage (see Fig. 1; tools appear to be shown in a horizontal orientation).
Claim 18
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Mischler as applied to claim 1 above, and further in view of United States Patent 2017/0361410 to Sato (hereinafter “Sato”).
Regarding claim 18, Mischler discloses the limitations of claim 1, however Mischler does not appear to disclose a sensor that is arranged in the storage space and/or in the loader passage and/or on the loader. However, it is known in the art of machining apparatuses having magazines to provide sensors.
For example, Sato teaches a machining apparatus (100; see Fig. 2) having a magazine (60). The magazine (60) includes a magazine body (62) for supporting a plurality of holders (64; see Fig. 3). The magazine may be provided with a tool sensor (66; see paragraph [0042]) in the storage space or a loading passage adjacent the magazine, the sensor designed to detected whether a tool (6) is gripped by a gripper of a machining tool (paragraph 0042]).
It would have been obvious to one having ordinary skill in the art to modify the device of Mischler to include providing a sensor at the storage space or loading passage, as taught by Sato. (See MPEP 2143(1)(C)). The resulting device would advantageously allow for the confirmation of the presence of a tool having been loaded or unloaded from the magazine, ensuring that the tool has been transported in the desired manner.
Thus, the combination of Mischler and Sato teaches the limitations of claim 18.
Response to Arguments
Specification
Applicant’s arguments, see Response, filed 22 July 2026, with respect to the objection to the Specification have been fully considered and are persuasive. The Objection of 24 March 2026 has been withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s arguments, see Response, filed 22 July 2026, with respect to the rejection of claim 1 under 35 USC 112 have been fully considered and are persuasive. The Rejection of 24 March 2026 has been withdrawn.
Claim 1 was previously rejected for various confusing language. Claim 1 has been amended.
Applicant's arguments filed 24 March 2026 with respect to the rejections of claims 7, 10, and 18 under 35 USC 112 have been fully considered but they are not persuasive.
Applicant has not directly addressed the outstanding rejections of claims 7, 10, and 18.
Claim Rejections - 35 USC § 102
Applicant’s arguments, see Response, filed 22 July 2026, with respect to the rejection(s) of claim(s) 1, 3-5, 16-17, and 19 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mischler.
Claims 1, 3-5, 16-17, and 19 were previously rejected as anticipated by Muser.
Applicant asserts that Muser does not disclose its separation device being configured to mechanically lock a passage.
Claim Rejections - 35 USC § 103
Applicant’s arguments, see Response, filed 22 July 2026, with respect to the rejection(s) of claims 2 and 6-9 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mischler.
Claims 2 and 6-9 were previously rejected over the combination of Muser and Hillen.
Claims 18 was previously rejected over the combination of Muser and Sato.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication 2022/0161379 to Zoller et al. teaches a tool holding device (see Fig. 4) with a mobile setup unit (66) which moves into and out of the tool holding device and a roller blind closure element (78) which selectively closes and opens a storage space containing tools.
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 DARRELL C. FORD whose telephone number is (313)446-6515. The examiner can normally be reached 8:30 AM to 5:15 PM, Monday to Friday.
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/DARRELL C FORD/Examiner, Art Unit 3726
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