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 .
Election/Restrictions
Claims 1-8 and 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group I and III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/29/2025.
Applicant's election with traverse of Group II, claims 9-16, in the reply filed on 09/29/2025 is acknowledged. The traversal is on the ground(s) that “the method applies to all of the figures”. This is not found persuasive.
The requirement is still deemed proper and is therefore made FINAL.
MPEP Section 808 states:
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction is not required . . . .
The MPEP expands upon part (B) in Section 808.02 (titled “Establishing Burden”). Specifically, Section 808.02 recites the following:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) - § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Note that it is only necessary to show one of (A), (B), or (C) to establish a serious burden. In the instant case, at least part (C) of Section 808.02 has been established. On Pages 3 and 4 and of the restriction requirement mailed 07/29/2025, Examiner noted that, at the very least, different search queries would be necessary to examine each different group as claimed and different search queries would be necessary to examine the exclusive characteristics of each species. Thus, burden has been properly established.
The requirement is still deemed proper and is therefore made FINAL. Claims 1-8 and 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b).
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: “evaluation 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 9-16 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 9 recites in:
line 6 “wherein the workpiece can move relative to the sensing of the workpiece”. The way these limitations have been set forth is confusing. How the workpiece can move relative to the sensing of itself? Additionally, the term “can be” renders the claim indefinite as it is unclear if the workpiece is indeed moving relative to the sensing of the workpiece, or not. Further clarification is needed.
Lines 10-11 “the orientation of the sensing element, and a second spatial direction of the at least 2 spatial directions is a direction transverse to orientation of the sensing element”.
First, there is insufficient antecedent basis for “the orientation” since no orientation of the sensing element has been previously set forth. Furthermore, it is unclear how this “orientation” is being defined. What exactly is catalogued as the “orientation” of the sensing element? From where to where is this orientation taken from? Further clarification is needed.
Second, the “orientation” set forth in line 11, renders the claim indefinite, as it is unclear if this “orientation” is the same as the one in line 10, or not. Further clarification is needed.
Claim 10 recited in line 3, “the pressure” which has insufficient antecedent basis, as no “pressure” has been previously introduced in the claim. Further clarification is needed.
Claim limitation ““evaluation device” in line 4 of claim 13 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. It is noted that the specification as filed sets forth on page 6, lines 17-21 that:
“The evaluation device may be a part or section of the control device of the whole machine which is implemented as a software in a main processor. A software routine (algorithm) detects the movement axis of the stylus20 and the (top end) ball: output (touch probe) signal change -> detection (e.g. comparison with a threshold) outputting a detection result.”
However, the specification as filed lacks to describe what is the specific structure of this “evaluation device”. The Specification sets forth that the evaluation device may be a part or section of the control device, which is implemented as a software in a main processor’. Thus, it is unclear if the evaluation device is indeed actual part or section of the control device, as the term “may be’ is not a definitive term; or if the evaluation device is a software program. It is unclear what is the specific structure of this “evaluation device”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AlA 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 (85 U.S.C. 132(a)).
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(0) and 2181.
Claim 13 also disclose in line 7 that the sensing probe is at least partially introduce into the aperture “detect the position thereof”. First, it is unclear what exactly “the position thereof” entails. Thereof, what? How is this “position” defined. Further clarification is needed. Second, there is insufficient antecedent basis for “the position” since no “position” has been previously set forth. Further clarification is needed.
Claim 14 recites in lines 2-3 “a side surface of a blank is approached by the sensing probe before or after the aperture”. First, it is unclear if this “blank” is the workpiece, or if it is an additional feature to the workpiece. Second, “the aperture” has insufficient antecedent basis, since no “aperture” has been previously introduced in the claim. Where exactly is this aperture located at? Further clarification is needed.
Claim 15 recites in line 2 “the aperture”, which has insufficient antecedent basis, since no “aperture” has been previously introduced in the claim. Furthermore, it is unclear where exactly is this aperture located at? Is the aperture, the workpiece? Or an element within the workpiece? Further clarification is needed.
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) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suyama et al. US 9,421,653 (hereafter—Suyama--), in view of Katayama US 2003/0167977.
In regards to claim 9, Suyama discloses a method for operating a milling machine (Figure 1) which comprises a milling spindle (22) and a workpiece holder (30) is moved with respect to the milling spindle in at least 3 spatial directions (see all of the spatial direction movements as in Figures 2-5), wherein a workpiece (80) which is held by clamping the workpiece to the workpiece holder (via securing portions 48A-48E for example), and from each workpiece (80) a dental restoration part of a desired shape is produced (see at least col 1, lines 12-57, see also col 9, lines 33-35) Suyama also discloses in col 3, lines 41-50, and col 9, lines 32-35 that the milling machine is used to machine a cutting process on a workpiece to produce an artificial tooth used for implant treatment, but is not limited to be applied to such a type of device.
However, Suyama fails to disclose that the milling machine has a sensor, which is clamped into the milling spindle and is configured to be brought into contact with the workpiece, wherein the workpiece can be move relative to the sensing of the workpiece; wherein a sensing element of the sensor is designed as a sensing probe and deflects upon contact on the workpiece in at least 2 spatial directions, wherein a first spatial direction of the at least 2 spatial directions corresponds to the orientation of the sensing element, and a second spatial direction of the at least 2 spatial directions is a direction transverse to orientation of the sensing element.
Nevertheless, Katayama teaches that it is well known in the art of milling, to have a milling machine comprising a milling spindle (having chuck 3 and housing 2), a workpiece holder (10) which is mounted so as to move with respect to the milling spindle in at least 2 spatial directions (at least in an X-Y direction), a workpiece (8/90) which is held in a clamped manner on the workpiece holder (via clamps 9 or 88), a sensor (4/4a), relative to which the workpiece (8/90) can be brought into contact or initial contact, and relative to which workpiece the sensor can be moved (along Z-axis) to sense the workpiece, wherein the sensor comprises a sensing probe (4/4a as presented by applicant), which is clamped into the milling spindle (see Figures 1, 5, and 15) and is configured to be brought into contact with the workpiece, wherein the workpiece can be move relative to the sensing of the workpiece; wherein a sensing element (14) of the sensor is designed as a sensing probe (4/4a) and deflects upon contact on the workpiece in at least 2 spatial directions (along the Z-axis and along a pivoting axis as shown in Figure 2B; along pivoting axis, from left to right as in Figure 2B), wherein a first spatial direction of the at least 2 spatial directions corresponds to the orientation of the sensing element (along the Z-axis and along a pivoting axis as shown in Figure 2B), and a second spatial direction of the at least 2 spatial directions is a direction transverse to orientation of the sensing element (along pivoting axis, from left to right as in Figure 2B). Katayama also discloses that the sensing probe (4/4a), is held by clamping in the milling spindle (see Figures 1, 5, and 15) instead of a tool. The sensing element has a tip (Figure 2) which is pressed against the workpiece, and the deflection of the sensing element is caused by the pressure, and wherein the deflection of the sensing element is detected separately for each spatial direction. Katayama teaches in at least paragraph [0002] that by providing the sensor, sensing probe, and sensing elements above, for fixing a workpiece that is used for positioning or centering a machine tool. The sensor structure above, provides precise performing or fine adjustment positioning or centering in a machine tool between a workpiece being machined and a tool (paragraph [0004]; [0046-0047] and paragraphs [0072-0078)).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed to provide Suyama’s milling machine with a sensor having a sensing probe that deflects upon contact with the workpiece and sensing element for contacting and sensing the workpiece, based on the teachings of Katayama, for precise and fine adjustment positioning or centering, between a workpiece being machined and a tool, in the milling machine tool.
In regards to claim 10, Suyama as modified discloses the method as claimed in claim 9, Suyama as modified also discloses the sensing element (of Katayama) has a tip which is pressed against the workpiece, and the deflection of the sensing element (of Katayama) is caused by the pressure, and wherein the deflection of the sensing element is detected separately for each spatial direction (of Katayama).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suyama et al. US 9,421,653 (hereafter—Suyama--) in view of Katayama US 2003/0167977 as applied to claim 9 above, and in further view of Otsuki et al. US 7,269,473 (hereafter—Otsuki--).
In regards to claim 11, Suyama as modified discloses the method as claimed in claim 9, Suyama as modified also discloses that the workpiece (80 of Suyama) is formed as a block and comprises at least 2 surfaces which extend perpendicularly to each other.
However, Suyama as modified fails to disclose that the sensing probe is brought into contact with the at least 2 surfaces, first one and then the other.
Nevertheless, Otsuki teaches that it is well known in the art to have a sensing probe brought into contact with at least 2 surfaces of a block, the surfaces extending perpendicularly to each other, where the contact is first on one of the surfaces and then the other (see Figures 1-2, 6-9). This provides accurate identification of location errors of the workpiece disposed on a table in a machine tool.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to further modify the method of Suyama, to have the sensing probe be brought into contact with the at least 2 surfaces, first one and then the other, as taught by Otsuki, to provide accurate identification of location errors of the workpiece disposed on the table of a machine tool.
In regards to claim 12, Suyama as modified discloses the method as claimed in claim 9, Suyama as modified also discloses that the workpiece (80 of Suyama) comprises at least one planar or partially planar surface (see Figures 4-6), and wherein the sensing probe is brought into contact with the at least one planar or partially planar surface, and the position of the at least one planar or partially planar surface is detected by the sensing probe (as taught by Katayam)
However, Suyama as modified fails to disclose that the position of the at least one planar or partially planar surface is detected by the sensing probe at 3 mutually spaced-apart points.
Nevertheless, Otsuki teaches that it is well known in the art to have a sensing probe brought into contact with at least one planar surface, where the contact surface is detected by the sensing probe at 3 mutually spaced-apart points (see Figures 1-2, 6-9). This provides accurate identification of location errors of the workpiece disposed on a table in a machine tool.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to further modify the method of Suyama, to have the sensing probe be brought into contact with at least one planar surface, where the contact surface is detected by the sensing probe at 3 mutually spaced-apart points, as taught by Otsuki, to provide accurate identification of location errors of the workpiece disposed on the table of a machine tool.
Claim(s) 13-14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suyama et al. US 9,421,653 (hereafter—Suyama--) in view of Katayama US 2003/0167977 as applied to claim 9 above, and in further view of Kitamura US 4,976,019.
In regards to claim 13, Suyama as modified discloses the method as claimed in claim 9, Suyama as modified also discloses the workpiece (80 of Suyama).
However, Suyama fails to disclose an aperture which extends in a planar surface, and wherein the sensing probe is at least partially introduced into the aperture to detect the position thereof.
Nevertheless, Kitamura teaches that it is well known in the art to have a workpiece with an aperture which extends in a planar surface, and wherein the sensing probe is at least partially introduced into the aperture to detect the position thereof (see Figures 2 and 6), to precisely measure the geometrical shape of the workpiece (column 6, lines 27-62).
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to further modify the method of Suyama, to have the workpiece with an aperture which extends in a planar surface, and wherein the sensing probe is at least partially introduced into the aperture to detect the position thereof, as taught by Kitimura, to precisely measure the geometrical shape of the workpiece.
In regards to claim 14, Suyama as modified discloses the method as claimed in claim 9, Suyama as modified also discloses that the sensing probe (as modified by Katamaya) approaches a side surface of the workpiece (80 of Suyama) having a side surface.
However, Suyama fails to disclose that the workpiece has an aperture and where the side surface of the blank is approached by the sensing probe before the aperture, and wherein the contact of the sensing probe on the side surface and the aperture extending therein takes place in one stroke, without breaking the contact between the sensing probe and the blank.
Nevertheless, Kitamura teaches that it is well known in the art to have a workpiece with an aperture which extends in a planar surface, where the side surface of the blank is approached by a sensing probe before the aperture, and wherein the contact of the sensing probe on the side surface and the aperture extending therein takes place in one stroke, without breaking the contact between the sensing probe and the blank (see column 4, lines 4-64 and Figure 6). This way, the geometrical shape of the workpiece is precisely measured.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to further modify the method of Suyama, to have the workpiece with an aperture, where the side surface of the blank is approached by a sensing probe before the aperture, and wherein the contact of the sensing probe on the side surface and the aperture extending therein takes place in one stroke, without breaking the contact between the sensing probe and the blank, as taught by Kitimura, to precisely measure the geometrical shape of the workpiece.
In regards to claim 16, Suyama as modified discloses the method as claimed in claim 9, Suyama as modified also discloses the second spatial direction and the first spatial direction (as modified by Kitimura).
However, Suyama fails to disclose that the second spatial direction is orthogonal to the first spatial direction.
Kitimura also discloses that the first and second spatial directions of the sensing probe are orthogonal, for attitude control (col 3, lines 1-5; Figure 2).
Nevertheless, Kitamura teaches that it is well known in the art to have a sensing probe with a first and second spatial directions orthogonal to each other, to attitude control (col 3, lines 1-5; Figure 2).
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to further modify the method of Suyama, to have the second spatial direction is orthogonal to the first spatial direction, as taught by Kitimura, for attitude control (col 3, lines 1-5; Figure 2).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suyama et al. US 9,421,653 (hereafter—Suyama--) in view of Katayama US 2003/0167977 claim 9 above, in view of Jung US 2012/0214133 and in further view of Kitamura US 4,976,019.
In regards to claim 15, Suyama as modified discloses the method as claimed in claim 9, Suyama as modified also discloses the workpiece (80 of Suyama).
However, Suyama fails to disclose an aperture with a rotation-prevention element.
Nevertheless, Jung teaches that it is well known in the art, to have a workpiece with an aperture and a rotation-prevention element (see Figure 7) as this arrangement secures the blank to a connector and thus the jig and/or fixture (paragraph [0061]).
Accordingly, it would have been obvious to a person having ordinary skill in the art to have the workpiece of Suyama with an aperture with a rotation-prevention element, as taught by Jung, to secure the blank to a connector and thus the jig and/or fixture (paragraph [0061]).
However, Suyama fails to disclose the sensing probe enters the aperture and by contact thereon detects the rotation-rotation prevention element.
Nevertheless, Kitamura teaches that it is well known in the art to have a workpiece with an aperture which extends in a planar surface, and wherein a sensing probe enters the aperture and by contact thereon detects the internal surfaces of the aperture (see Figures 2 and 6), to precisely measure the geometrical shape of the workpiece (column 6, lines 27-62).
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to further modify the method of Suyama, to have the workpiece with the aperture and the rotation-prevention element of Suyama be sensed by the sensing probe by being introduced into the aperture to detect the position thereof, as taught by Kitimura, to precisely measure the geometrical shape of the workpiece.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722