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:
“insulating material to insulate the spindle power-on device from the machine tool” in claim 1.
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 Objections
Claim 1 is objected to because of the following informalities: On line 2 of the claim, a “:” should be inserted after “comprising”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On lines 9-10 of the claim, “an electric brush of each electric brush assembly” should be amended to “[[an]] a corresponding electric brush of each electric brush assembly”. Appropriate correction is required.
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 1-4 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.
Lines 1-2 of claim 1 state, “A spindle power-on device for a mechanical discharge compound machine tool mounted on a spindle.” This limitation is viewed to be vague and indefinite, because it is unclear as to what is meant by “a mechanical discharge compound machine tool.” What is a mechanical discharge? Or is Applicant not actually setting forth a “mechanical discharge” per se and Applicant is setting forth a compound machine tool that performs both mechanical machining and discharge machining, for example? This limitation is further viewed to be vague and indefinite, because as written, it appears as if Applicant is setting forth that the compound machine tool is mounted on a spindle. How or in what way is a compound machine tool mounted on a spindle? Isn’t the spindle an element of the compound machine tool?
Claim limitation “insulating material to insulate the spindle power-on device from the machine tool” of claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Examiner notes that the specification simply states the following as it pertains to the “insulating material”.
[0006] A spindle power-on device for a mechanical discharge compound machine tool mounted on a spindle is provided, the spindle power-on device includes a copper bush, a gear plate, bevel gears, electric bush assemblies, a chuck housing, a supporting plate, a mounting plate and a power device. The gear plate and the bevel gears are mounted inside the chuck housing in a meshed manner. The top of the chuck housing is connected with the mounting plate. The bottom of the chuck housing is supported by the supporting plate. The supporting plate is made of insulating material to insulate the power-on device from the machine tool. Each electric brush assembly is mounted in a groove in the chuck housing. A bottom bearing of each of electric bush assemblies is placed in a groove of the gear plate. The copper bush is mounted on the spindle. An electric brush of each electric brush assembly is pressed against an outer surface of the copper bush. The copper bush, the spindle and the remaining components of the power-on device are ensured to be coaxial.
[0022] As shown in FIG. 1 to FIG. 3, a spindle power-on device 1 for a mechanical discharge compound machine tool mounted on a spindle 3 is provided, the spindle power-on device 1 includes a copper bush 12, a gear plate 10, bevel gears 19, electric bush assemblies 7, a chuck housing 8, a supporting plate 6, a mounting plate 9 and a power device 2. The gear plate 10 and the bevel gear 19 are mounted inside the chuck housing 8 in a meshed manner. The top of the chuck housing 8 is connected with the mounting plate 9. The bottom of the chuck housing 8 is supported by the supporting plate 6. The supporting plate 6 is made of insulating material to insulate the spindle power-on device 1 from the machine tool. Each electric brush assembly 7 is mounted in a groove in the chuck housing 8. A bottom bearing of each electric bush assembly 7 is placed in a groove of the gear plate 10. The copper bush 12 is mounted on the spindle. An electric brush of each electric brush assembly 7 is pressed against an outer surface of the copper bush 12. The copper bush 12, the spindle 3 and the remaining components of the power-on device 1 are ensured to be coaxial.
Based on the foregoing, the specification does not provide sufficient details concerning the “insulating material” such that one of ordinary skill in the art would understand how or in what way that the insulating material performs the entire claimed function of, “insulate the spindle power-on device from the machine tool” of claim 1. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
As it pertains to option (a) as a means for overcoming this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, Examiner suggests the following amendment: “the support plate is made of insulation material to insulate the spindle power-on device from the machine tool”.
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Lines 7-8 of claim 1 state, “each of the electric brush assemblies is mounted in a groove in the chuck housing.” This limitation is viewed to be vague and indefinite, because it is unclear if each of the electric brush assemblies is mounted in a same groove of the chuck housing, or if instead, each of the electric brush assemblies is mounted in a different/respective groove of the chuck housing. In order to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, Examiner suggests the following amendment: “each of the electric brush assemblies is mounted in a respective groove in the chuck housing”.
Lines 8-9 of claim 1 state, “a bottom bearing of each electric bush assembly is placed in a groove of the gear plate.” This limitation is viewed to be vague and indefinite, because it is unclear if each bottom bearing is placed in a same groove of the gear plate, or if instead, each bottom bearing is placed in a different/respective groove of the gear plate. In order to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, Examiner suggests the following amendment: “a corresponding bottom bearing of each electric bush assembly is placed in a respective groove of the gear plate”.
Lines 10-12 of claim 1 state, “the copper bush, the spindle and remaining components of the power-on device are ensured to be coaxial.” This limitation is viewed to be vague and indefinite, because it is unclear as to what is meant by “ensured to be coaxial” as it pertains to the copper bush, the spindle, and the remaining components of the power-on device. Is this to say that the copper bush, the spindle, and the remaining components of the power-on device are all fixed to one another such that they are all co-axial with one another, for example?
Lines 8-9 of claim 2 state, “another end of each small sliding block is connected with a bearing and placed in a groove in a groove.” This limitation is viewed to be vague and indefinite, because it is unclear if the another end of each small sliding block is connected with a same bearing, or if instead, the another end of each small sliding block is connected with a different/ respective bearing.
Lines 2-3 of claim 3 state, “each of the bevel gears is fixed in an opening in a side face of the housing through a bearing.” This limitation is viewed to be vague and indefinite, because it is unclear if each of the bevel gears is fixed in a same opening, or if instead, each of the bevel gears is fixed in a different/respective opening. This limitation is fruther viewed to be vague and indefinite, because it is unclear if each of the bevel gears is fixed through a same bearing, or if instead, each of the bevel gears is fixed through a different/respective bearing.
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 1-4 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.
As described above, the disclosure does not provide adequate disclosure to perform any of the following claimed function(s):
“insulate the spindle power-on device from the machine tool” (claim 1, line 7).
Examiner’s Comment
A thorough search has been conducted re: the invention/claims. That being said, though no art rejections are considered to presently apply to claims 1-4 Examiner notes that no indication regarding the allowability of the subject matter of claims 1-4 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, particularly given that it is unclear what changes to the claims might be necessary to overcome the above-described issue(s) with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Vitale whose telephone number is (571)270-5098. The examiner can normally be reached Monday - Friday 8:30 AM- 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722