CTNF 18/394,335 CTNF 90051 DETAILED ACTION Claims 1-20 are currently presented for examination. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Specification 07-29 AIA The disclosure is objected to because of the following informalities: the Specification collectively groups multiple Figures at least at paragraph [0030] of the Brief Description of the Drawings. The examiner strongly recommends identifying each Figure in its own paragraph with a separate description to reduce the opportunities for confusion as to how many and which Figures are encompassed by the range cited . Appropriate correction is required. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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: a tool holding device in claim 1; at least one setup unit in claim 1; a separation device in claim 1; and tool holder receptacles mean in claim 2; and holding and support means in claim 16. The tool holding device appears to be described in paragraph [0034]. The setup unit appears to be described at paragraph [0034]. The separation device appears to be described at paragraph [0039]. The tool holder receptacle means appear to be described at paragraph [0036]. The holding and support means appear to be described in paragraph [0042], though the examiner notes that the paragraph recites “holding or support means” rather than “holding and support means.” 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 07-30-02 AIA 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. 07-34-01 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 “a tool rack magazine for a machine tool for chip removing machining of metal workpieces, comprising: at lines 1-3. It is unclear whether the “comprising” clarifies the tool rack magazine or the machine tool. Claim 1 recites “a loader that can be moved in a second direction inside a loader passage, which is oriented transverse to a first direction” at lines 7-8. It is unclear which previously claimed structure is orientated transverse to the first direction. Claim 1 recites “at least one setup unit” at line 5 and “including the setup unit” at line 9. It is unclear whether the setup unit in line 9 is one of the at least one setup units of line 5. 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 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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 07-15 AIA Claim s 1, 3-5, 16-17, and 19 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by United States Patent 7,731,644 to Muser (hereinafter “Muser”) . Regarding claim 1, Muser discloses a tool rack magazine (3, 4, and 6; see Fig. 1) for a machine tool for chip removing machining of metal workpieces, comprising: a tool holding device (3) configured for holding tools (5) , at least one setup unit (4) that can be moved into and out of a storage space (space surrounding rack 7; see Col. 3, lines 28-36) in the tool holding device (3) , a loader (6) that can be moved in a second direction (along X direction; see Fig. 2 and Col. 3, lines 28-29) inside a loader passage (path through arm 40) , which is orientated transverse to a first direction (Z direction) , wherein the loader passage (path through arm 40) extends along the tool holding device (3) including the setup unit (4) , wherein a separation device (42) is provided between the loader passage (path through arm 40) and the storage space (space around rack 7; see Fig. 1). Regarding claim 3, Muser discloses the limitations of claim 1, and further Muser discloses that the tool holding device (3) is configured to hold all tools (5) in a horizontal orientation facing away from the loader passage (see Fig. 2). The examiner notes that what is understood to be a horizontal orientation is not defined, and that a horizontally extending axis or plane could be drawn through any supported tool. Regarding claim 4, Muser discloses the limitations of claim 3, and further Muser disclose that the tool holding device (3) is configured to receive and store the tools (5) in rows arranged above one another (see Fig. 1). Regarding claim 5, Muser discloses the limitations of claim 4, and further Muser discloses that removal passages are provided between the rows (see Fig. 1; gaps present between tools 5 positioned in the respective rows). Regarding claim 16, Muser discloses the limitations of claim 1, and further Muser discloses that holding and support means (guide rails 44; see Col. 3, lines 31-36) are provided in the storage space (space surrounding rack 7; see Fig. 7) for exact positioning of the setup unit (4). Regarding claim 17, Muser discloses the limitations of claim 1, and further Muser discloses that at least one position mark (any protruding member shown in Fig. 2 can be interpreted as a position mark) is arranged on the setup unit (4). Regarding claim 19, Muser discloses a machining center (see Fig. 1) having a rack magazine according to claim 1 (see rejection of claim 1 above) Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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 6-9 07-22-aia AIA Claim s 2 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Muser as applied to claim 1 above, and further in view of United States Patent 4,943,199 to Hillen (hereinafter “Hillen”) . Regarding claim 2, Muser discloses the limitations of claim 1, and further Muser discloses that the tool holding device (3) comprises a first tool holder receptacle means (at openings 7). Muser does not explicitly disclose that its first tool holder receptacle means is adapted to hold a tool holder, however it is known in the prior art to support tools or tool holders (see Col. 1, lines 41-44 and lines 63-67). For example, 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 Muser 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 (5) taught by Muser appear to also have circular cross sections (see Fig. 1). One having ordinary skill in the art would reasonably expect that the receptacles taught by Muser would be capable of supporting tools, tool holders, and tool units having similar cross sections as taught by Hillen, such that the device of Muser would support a tool holder as claimed. Thus, the combination of Muser and Hillen teaches the limitations of claim 2. Regarding claim 6, the combination of Muser and Hillen teaches the limitations of claim 2, and further Muser teaches that the setup unit (4) comprises second tool holder receptacle means (tool changer 6 has a circular head 12; see Col. 3, lines 15-27). Regarding claim 7, the combination of Muser and Hillen teaches the limitations of claim 6, and further Muser teaches that the second tool holder receptacle means (6, 12) are configured to store the tools (5) in the same orientation as the first tool holder means (7) , if the setup unit is arranged inside the storage space. This limitation is understood to be moot where the setup unit is not arranged inside the storage space. Regarding claim 8, the combination of Muser and Hillen teaches the limitations of claim 6, and further Muser teaches that the first tool holder receptacle means (7) are arranged in a first plane (plane defined at body rail 43; see Fig. 1) and the second tool holder receptacle means (6, 12) are arranged in a second plane (plane at movement device 40, illustrated forward/out of the page relative to the body 43, see Fig. 1) and wherein the first and the second plane are arranged in a distance to one another (see Fig. 1; bodies shown displaced by thickness at least of body 40) and define an interstice in this manner . Regarding claim 9, the combination of Muser and Hillen teaches the limitations of claim 8, and further Muser teaches that the separation device (42) is arranged inside the interstice (see Fig. 1). Regarding claim 20, the combination of Muser and Hillen teaches the limitations of claim 2, and further Muser teaches that the tool holding device is configured to hold all tools in a horizontal orientation (see Fig. 1) facing away from the loader passage (path through arm 40; see Fig. 1). The examiner notes that what is understood to be a horizontal orientation is not defined, and that a horizontally extending axis or plane could be drawn through any supported tool. Claim 18 07-22-aia AIA Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Muser as applied to claim 1 above, and further in view of United States Patent 2017/0361410 to Sato (hereinafter “Sato”) . Regarding claim 18, Muser discloses the limitations of claim 1, however Muser 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 Muser 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 Muser and Sato teaches the limitations of claim 18 . Allowable Subject Matter 07-43-02 AIA Claim s 10-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 10, the prior art of record does not explicitly disclose or fairly teach “ wherein the separation device comprises a closure element that can be moved into an out of the interstice and the closure element is configured to block a passage between the storage space and the loader passage if it is placed inside the interstice ,” in combination with the remaining limitations of the claim . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : United States Patent 7,404,786 to Krosta et al. (hereinafter “Krosta”) teaches a tool magazine apparatus having a loading robot (12). 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. 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, Thomas Hong can be reached at (571) 272-0993. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DARRELL C FORD/Examiner, Art Unit 3726 Application/Control Number: 18/394,335 Page 2 Art Unit: 3726 Application/Control Number: 18/394,335 Page 4 Art Unit: 3726 Application/Control Number: 18/394,335 Page 5 Art Unit: 3726 Application/Control Number: 18/394,335 Page 6 Art Unit: 3726 Application/Control Number: 18/394,335 Page 7 Art Unit: 3726 Application/Control Number: 18/394,335 Page 8 Art Unit: 3726 Application/Control Number: 18/394,335 Page 9 Art Unit: 3726 Application/Control Number: 18/394,335 Page 10 Art Unit: 3726 Application/Control Number: 18/394,335 Page 11 Art Unit: 3726 Application/Control Number: 18/394,335 Page 12 Art Unit: 3726