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 .
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “160” has been used to designate both the “adjusting device” and “adapter plate”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 2, 4, 6, 7 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 2, the claim recites “the at least one support inset is detachably mounted on the at least one top module.” However, claim 1 recites at least one top module “comprising at least one support inset”. As the support inset is recited as being the structure of the top module, it is unclear how it is mounted on the top module. In other words, it is unclear how the support inset can be connected to itself. For the purposes of this examination, this claim will be read as defining that the support module includes some other structure to which the support inset is detachably mounted, as this is examiner’s best understanding of the claim.
Regarding claim 4, the claim recites “a top module.” However there is already antecedent bases for “at least one top module” in claim 1. It is unclear if “a top module” in claim 1 is an additional element, or intended to define a structure of the at least one top module recited in claim 1. Furthermore, this claim defines detachable mounting of one or more support insets to a top module, which is unclear for substantially the same reasons discussed in the 112b rejection of claim 2 above. For the purposes of this examination, this claim will be interpreted as best can be understood by examiner and is explained in the rejection below.
Regarding claims 6 and 7, these claims recite similar limitations as claim 2 regarding detachable mounting of a support inset to a top module. These claims are unclear for substantially the same reasons as described in the 112b rejection of claim 2 above.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The sole limitation of claim 8 which depends from claim 1 recites “at least one top module is detachably fastened to the base rail.” However, claim 1 already recites “at least one top module detachably fastened to the base rail”. Therefore, claim 8 fails to further limit the subject matter of claim 1 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-2 and 4-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goetz (DE 4234774, see provided machine translation).
Regarding claim 1, Goetz discloses a support rail for centerless grinding, comprising: a base rail (10) and at least one top module (comprising support inset 11) detachably fastened (by depicted screw) to the base rail comprising at least one support inset (11) which seats a workpiece to be ground ([0009]).
Regarding claim 2, Goetz further discloses the at least one support inset is detachably mounted on the at least one top module (see 112b rejection above; as best understood, the support inset 11 is detachably mounted to element 12 of top module as shown in fig 3).
Regarding claim 4, Goetz further discloses the top module a top module (12) on which one or more support insets of the at least one support inset are detachably mounted (see 112b rejection above; as best understood support insets 11 are detachably mounted by screw 19 to elements 12 of top modules as shown in figs 1 and 3).
Regarding claim 5, Goetz further discloses the at least one top module comprises at least two top modules (as shown in fig 1).
Regarding claims 6 and 7, Goetz further discloses on each of the at least two top modules a support inset is detachably mounted (fig 1; inset 11 detachably mounted to modules 12); and the at least one support inset (11) is detachably mounted on selected top modules (12) of the at least two top modules (fig 1; each support inset is mounted on a selected different top module 12).
Regarding claim 8, Goetz further discloses at least one top module is detachably fastened to the base rail (see 112d rejection above; this limitation is addressed in the 102 rejection of claim 1 above).
Regarding claim 9, Goetz further discloses the base rail (10) is sized in a longitudinal direction (horizontal direction as viewed in fig 1) in such a way that at least two top modules arranged successively in the longitudinal direction can be fastened to the base rail (fig 1 shows multiple top modules comprising support insets 11 fastened to the base rail 10).
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 (11) to the base rail (in embodiment of fig 6, top module comprising support inset 11 is detachably mounted to base rail 10 by an adapter device 27).
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 relative to the base rail (rail 27 shown in fig 6 is a guiding device guiding the top module 11 relative to base rail 10); wherein the guiding device comprises at least one guide rail (27) arranged on the at least one top module (comprising support inset 11) and at least one guide groove (68) arranged on the base rail (10; fig 6) or on an adapter device 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 relative to the base rail (as described [0024]); wherein the adjusting device comprises a stop element (37) on the base rail (10) 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, which is considered to be a part of a top module structure including elements 11 and 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) 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).
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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Other similar support rails and centerless grinders are cited.
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