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.
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: “adapter device” in claim 10, “guiding device” in claim 11, and “adjusting device” in claim 13.
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 6 and 9 is 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.
Regarding claim 6, the claim recites “a support inset.” However, there is already antecedent basis for at least one support inset in claim 1, making it unclear if this is an additional support inset or intended to further define the at least one support inset recited in claim 1. For the purposes of this examination, this claim will be read as further defining a single one of the previously recited at least one support insets.
Regarding claim 9, the claim recites “a longitudinal direction”, which has already been recited in claim 1. This makes it unclear if the “longitudinal direction” recited in claim 9 is the same or different from the longitudinal direction recited in claim 1. For the purposes of this examination, this will be interpreted as “the longitudinal direction”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 5, and 9-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goetz (DE 4234774, previously cited).
Regarding claim 1, Goetz discloses a support rail for centerless grinding, comprising: a base rail (10) and at least one top module (27) detachably fastened (by threaded connections shown in embodiments of figs 4-6) to the base rail, and at least one support inset (11) which is attachable in a longitudinal direction to the at least one top module (attached to element 27 so as to extend in a longitudinal direction into the page as viewed in figs 5-6) and seats a workpiece to be ground ([0009]).
Regarding claim 5, Goetz further discloses the at least one top module comprises at least two top modules (as shown in fig 1 and described [0007], multiple support insets 11 are provided, including one for each upper end face on the raised sections 12 of base rail 10; [0013] describes the top module 27 of figs 4-5 being for each support inset 11 and applying to the upper end face of the base body, indicating a plurality of top modules, one for each support inset).
Regarding claim 9, Goetz further discloses the base rail (10) is sized in the longitudinal direction (horizontal direction as viewed in fig 1) in such a way that at least two top modules (27) arranged successively in the longitudinal direction can be fastened to the base rail (fig 1 shows multiple elements 12 with upper end faces as described [0007], and with the top modules 27 fastened to these upper end faces as described [0013]).
Regarding claim 10, Goetz further discloses an adapter device (interpreted under 112f as comprising a plate or functional equivalents thereof) to detachably fasten the at least one top module (27) to the base rail (adapter device 50 detachably fastening top module 27 to base rail 10 as shown in figs 6 and including plate elements as shown in figs 7-8).
Regarding claims 11-12, Goetz further discloses a guiding device (for claim 11, this is interpreted under 112f as comprising a rail or functional equivalents thereof; for claim 12, which recites structure, this limitation is no longer interpreted under 112f) to guide the at least one top module (27) relative to the base rail (10); wherein the guiding device comprises at least one guide rail (fig 6; surface 81 acts as a rail guiding the top module 27) arranged on the at least one top module (arranged on right side of top module 27 as viewed in fig 6) and at least one guide groove (68) arranged on the base rail (10; fig 6) or on an adapter device (adapter device is alternatively recited and not necessary to meet the claim), and interacts with the at least one guide rail (as shown in fig 6 and described [0022-0024]).
Regarding claims 13-14, Goetz further discloses an adjusting device (for claim 13, this is interpreted under 112f as comprising a stop or functional equivalents thereof; for claim 14, which recites structure, this limitation is no longer interpreted under 112f) to adjust a height of the at least one top module (27) relative to the base rail (as described [0024]); wherein the adjusting device comprises a stop element (37) on the base rail (10; fig 6) or on an adapter device (adapter device is alternatively recited and not necessary to meet the claim), and an adjustable adjusting element (51) that interacts with the stop element (as described [0024-0025]) and that is arranged on the at least one top module (arranged on element 27).
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.
Claim(s) 2, 4, 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goetz (DE 4234774, previously cited) alone.
Regarding claim 2, Goetz teaches all the elements of claim 1 as described above. Goetz further teaches the at least one support inset (11) is mounted on the at least one top module (27; figs 4-6). Goetz is silent as to how the support inset is mounted in these figures and therefore does not explicitly teach the support inset being detachably mounted in the embodiments of figures 4-6. However, in figure 3, Goetz teaches detachable mounting of the support inset (11) to top module (12) in the embodiment of figs 1-3, the support inset being detachable by screw (19). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to detachably mount the support inset of Goetz to the top module, as this provides the known advantage of allowing the support inset to be easily replaced without removing and reinstalling the entire support rail as taught by Goetz ([0003]).
Regarding claim 4, Goetz teaches all the elements of claim 1 as described above. Goetz further teaches one or more support insets of the at least one support inset (11) are mounted to the at least one top module (27; figs 4-6). Goetz is silent as to how the support inset is mounted in these figures and therefore does not explicitly teach the support inset being detachably mounted in the embodiments of figures 4-6. However, in figure 3, Goetz teaches detachable mounting of a support inset (11) to a top module (12) in the embodiment of figs 1-3, the support inset being detachable by screw (19). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to detachably mount one or more support insets of the at least one support inset of Goetz to the at least one top module, as this provides the known advantage of allowing the support inset to be easily replaced without removing and reinstalling the entire support rail as taught by Goetz ([0003]).
Regarding claims 6 and 7, Goetz, as modified teaches all the elements of claim 5 as described above. Goetz further teaches on each of the at least two top modules (27) a support inset is mounted (figs 4-5; inset 11 mounted to top module 27, which is associated with each two upper end faces as described [0007], [0013], and fig 1); and the at least one support inset (11) is mounted on selected top modules (27) of the at least two top modules (figs 4-5; inset 11 mounted to selected top module 27, which is associated with each two upper end faces as described [0007], [0013], and fig 1). Goetz is silent as to how the support inset is mounted in the embodiment figures (4-5) and therefore does not explicitly teach the support inset being detachably mounted in the embodiment of figures 4-5. However, in figure 3, Goetz teaches detachable mounting of a support inset (11) to a raised section (12) in the embodiment of figs 1-3, the support inset being detachable by screw (19). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to detachably mount each of the at least two support insets to each of the two selected top modules, as this provides the known advantage of allowing the support inset to be easily replaced without removing and reinstalling the entire support rail as taught by Goetz ([0003]).
Claim(s) 3 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goetz as applied to claim 1 above, and further in view of Caster (US 1814367, previously cited).
Regarding claim 3, Goetz teaches all the elements of claim 1 as described above. Goetz does not teach the at least one support inset comprises an annular stop. Caster teaches a support rail for centerless grinding including at least one support inset comprising an annular stop (45; fig 5). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to employ an annular stop with the support inset of Goetz, as an annular stop allows free rotation of the workpiece during grinding as taught by Caster (p 2, lines 68-76).
Regarding claim 15, Goetz teaches all the elements of claim 1 as described above. Goetz further teaches a centerless grinder comprising: a grinding disk (“grinding wheel” described [0009]), a control wheel (“regulating wheel” described [0009]), and the support rail according to claim 1 (as detailed in the rejection of claim 1 above), wherein the grinding disk and the control wheel are on opposite sides of a workpiece to be ground (as described [0009]), wherein the support rail is positioned to support the workpiece being ground ([0009]). Goetz is silent as to the arrangement of the support rail relative to the grinding disk and control wheel and thus does not explicitly teach the support rail is positioned between the grinding disk and control wheel. Caster teaches a centerless grinder comprising a grinding disk (16), a control wheel (17), and a support rail (26) between the grinding disk and control wheel (fig 4) to support a workpiece (27) being ground. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to position the support rail of Goetz between the grinding disk and support wheel, as this location achieves the predictable result of centrally supporting the workpiece as taught by Caster (p 2, lines 90-99).
Response to Arguments
Applicant's arguments filed 22 Apr 2026 have been fully considered but they are not persuasive. Applicant argues that the amendments to the claims, specification, and drawings have alleviated the previous objections and rejections under 112b and 112d. While most of these have been addressed, there are remaining 112b issues, as detailed in the rejections above.
Regarding claims 10, 11, and 13, applicant argues that the claim terms “adapter device”, “guiding device”, and “adjusting device” should not be interpreted under 112f, contending that the term “device” connotes structure. Examiner respectfully disagrees. As discussed in MPEP 2181 I. A., the term “device for” has been identified as a generic placeholder which may invoke interpretation under 112f. The fact that the term “device” has been used to describe three completely different elements is evidence of the fact that the term “device” does not imply any particular structure for a person of ordinary skill. Applicant argues that the word “to” in the claims connotes structure in light of the fact that the figures show a support rail for centerless grinding. While the claims at hand use the phrase “device to” rather than “device for”, the word “to” in the claims acts only as a transition between the nonstructural term “device” and the claimed functions. The word “to” is merely a transitional word in the claims and does describe, implicitly or explicitly, any particular structure.
Specifically regarding claim 10, this claim recites “an adapter device”. While in some arts, the word “adapter” may imply a particular structural meaning (e.g. an adapter for cable), in the art of support rails for centerless grinding, no particular structure is implied. The term “adapter device” is merely a name of the indicated element in the claims. At most, the word “adapter” implies an additional function of adapting, or acting as an interface between two elements. This is not structure, but function. The remaining elements of the claim, “to detachably fasten the at least one top module to the base rail”, are purely functional limitations.
Similarly, claims 11 and 13 respectively recite “a guiding device” and “an adjusting device”. The terms “guiding” and “adjusting” are purely functional, and are used here merely to differentiate one device from another by name. The remainders of each of these claims consist entirely of functional limitations.
Contrary to applicant’s arguments, neither the term generic term “device”, or the claimed phrases “adapter device”, “guiding device”, or “adjusting device” have been particularly defined in the specification. While the specification does describe structure for these claim limitations, this is not a special definition of these claim terms.
Applicant argues that examiner has not checked “whether: (1) the specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure; (2) general and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure; and/or (3) the prior art provides evidence that the term is an art-recognized structure to perform the claimed function,” stating that this makes examiner’s interpretation under 112f “fatally defective”. However, this section of the MPEP (2181I. C.) recites “To determine whether a word, term, or phrase coupled with a function denotes structure, examiners may check” (emphasis added) the above quoted sources. The word “may” in this description indicates that there is no requirement for examiner to check all of these sources to determine whether a claim element invokes interpretation under 112f.
Applicant argues that the specification describes the specific structure referred to by the claimed devices. However, this description is not a definition of any of these claim terms. In fact, it is a requirement that the specification provide enough description to support a claim element which invokes interpretation under 112f (MPEP 2181 II.). This is a requirement under 112a and 112b, and does not negate the interpretation under 112f.
Applicant cites Williamson v. Citrix Online, LLC as support for their argument that the term “device” should not be interpreted under 112f. However, as discussed in MPEP 2181, the term at issue in this case was a “distributed learning control module” rather than a “device”. Applicant additionally cites Cambridge dictionary as defining a device as “an object or machine that has been invented for a particular purpose”. However, “object” and “machine” are themselves generic terms which do not indicate any particular structure. Applicant additionally cites several court cases in an attempt to argue that the term “device” is not a generic term in this case. Examiner points once again to MPEP 2181 I. A., which describes that it has been held that the term “device for” has been identified as a generic placeholder which may invoke interpretation under 112f. In this case, the claimed terms do not imply any particular structure to a person of ordinary skill in the art, and there is no additional structure in claims 10, 11, or 13 which would negate the interpretation under 112f. Note that claims 12 and 14, which respectively depend from claims 11 and 13, actively recite the additional structure to negate the interpretation under 112f.
Regarding claim 1 and its dependents, applicant argues that Goetz does not teach the features of claim 1, arguing specifically that the support plate 11 of Goetz is not detachably mounted in the longitudinal direction of plate carrier 27. However, in claim 1, there is no limitation requiring detachable connection between the support inset (analogous to element 11 of Goetz) and top module (analogous to element 27 of Goetz). Furthermore, even if claim 1 were to recite a detachable connection between these elements, this is rendered obvious by the embodiment of figs 1-3 of Goetz, which removably attaches the support inset 11 directly to the base rail 10. Contrary to applicant’s arguments, a detachably fastened top module with an attached support inset is clearly shown in Goetz’s second and third embodiments shown in figures 4-8. This is detailed in the rejections above.
Conclusion
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 MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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