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Claims 9-19 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group II and III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/20/2026.
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on 05/20/2026 is acknowledged. The traversal is on the ground(s) that:
Groups I and II are “nearly identical and include the same amount of machining of the part…are capable of being used together and clearly do not have a materially different design, mode of operation, function or effect”
Groups I and III “independent claim 13 of Group III specifically states…in the same manner as independent claim 1 of Group I”.
Groups II and III “independent claim 13 of Group III specifically states…in the same manner as independent claim 9 of Group II”; and
The Examiner has not met “requirement (A)” or “requirement (B)”.
This is not found persuasive.
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 . . .
In response to Applicant’s argument regarding sections 3a-c above, it has been noted that the various groups as identified in Restriction Requirement mailed April 9th, 2026, have distinct claim limitations and the scope of each group is different.
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 Page 4 of the restriction requirement mailed April 9th, 2026, Examiner noted that, at the very least, different search strategies, different queries (word) searches, within various areas of search (classes and/or sub-classes), are needed for each different Invention as claimed. Thus, burden has been properly established.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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) 1-3, 6-7 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Feinauer et al. US 7,367,929.
In regards to claim 1, Feinauer discloses a method for transferring a part (44) being machined by a machine (10) from a first fixture (chuck 42) to a second fixture (chuck 52), said first fixture (42) being mounted to a first actuator (spindle 34) and said second fixture (52) being mounted to a second actuator (spindle 50), said method comprising: securing the part to the first fixture (Figure 1); operating the first actuator (34) so that the part (44) is able to be machined on sides of the part except a side of the part coupled to the first fixture (see Figure 1); machining the part (44) while the part is secured to the first fixture (as seen in Figure 1, see also column 7, lines 31-37 and column 10, lines 39-41); operating the first actuator (34) and the second actuator (50) so that the part (44) secured to the first fixture (42) is aligned with the second fixture (52) (see Figure 1); securing the part (44) to the second fixture (42) and releasing the part (44) from the first fixture (42); operating the second actuator (50) so that the part (44) is able to be machined on the side of the part that was not able to be machined when the part was coupled to the first fixture (see Figure 2 and 3); and machining the side of the part that was not able to be machined when the part was coupled to the first fixture while the part is secured to the second fixture (Figures 2 and 3).
In regards to claim 2, Feinauer discloses the method according to claim 1, Feinauer also discloses that the first and second actuators are rotary actuators (of rotating spindles 34 and 50).
In regards to claim 3, Feinauer discloses the method according to claim 2, Feinauer also discloses that the first and second actuators (34 and 50 respectively) are positioned side-by-side (see Figures 1-3, where 34 and 50 are positioned side-by-side).
In regards to claim 6, Feinauer discloses the method according to claim 2, Feinauer also discloses that machining the part (44) includes using a tool (on tool spindle 12) movable in the X-Y-Z directions (column 6, lines 20-22), and wherein the first and second actuators (34 and 50) rotate in the Y direction (e.g. pivoting axes 38 and 56).
In regards to claim 7, Feinauer discloses the method according to claim 2, Feinauer also discloses that machining the part (44) includes using a tool (on tool spindle 12) movable in the X-Y-Z directions (column 6, lines 20-22), and wherein the first and second actuators (34 and 50) rotate in the Z direction (e.g. axes 40 or when each of the first and second actuators central axes are substantially perpendicular to a plane where slide 60 slides)(note that the specific directions of where each of the X-Y-Z directions are disposed at, are not claimed and thus are relative directions).
In regards to claim 8, Feinauer discloses the method according to claim 1, Feinauer also discloses that the first fixture and the second fixture include a vise (vise chucks 42 and 52 respectively) for holding the part (44).
Claim(s) 1-5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuchida US 10,906,147.
In regards to claim 1, Tsuchida discloses a method for transferring a part (W) being machined by a machine (S2) from a first fixture (10) to a second fixture (another one of 10), said first fixture (10) being mounted to a first actuator (3) and said second fixture (another one of 10) being mounted to a second actuator (another 3), said method comprising: securing the part to the first fixture (Figure 1A); operating the first actuator (3) so that the part (W) is able to be machined on sides of the part except a side of the part coupled to the first fixture (see Figure 1A); machining the part (W) while the part is secured to the first fixture (as seen in Figure 1A); operating the first actuator (3) and the second actuator (3) so that the part (W) secured to the first fixture (10) is aligned with the second fixture (10) (see Figure 3A); securing the part (W) to the second fixture (10) and releasing the part (W) from the first fixture (3)(see Figure 3B); operating the second actuator (3) so that the part (W) is able to be machined on the side of the part that was not able to be machined when the part was coupled to the first fixture (see Figure 3B-3C); and machining the side of the part that was not able to be machined when the part was coupled to the first fixture while the part is secured to the second fixture (Figures 3B-3C)(column 4 line 58-67 and column 5, lines 1-54).
In regards to claim 2, Tsuchida discloses the method according to claim 1, Tsuchida also discloses that the first and second actuators are rotary actuators (since 10 rotates around C axis and/or since 3 rotates around B axis).
In regards to claim 3, Tsuchida discloses the method according to claim 2, Tsuchida also discloses that the first and second actuators (3) are positioned side-by-side (see Figures 3A-3C are positioned side-by-side).
In regards to claim 4, Tsuchida discloses the method according to claim 3, Tsuchida also discloses that operating the first actuator and the second actuator (3) so that the part (W) secured to the first fixture (3) is aligned with the second fixture (3) includes rotating the first actuator (3) 90° from an upright position clockwise or counter-clockwise and rotating the second actuator (3) 90° from an upright position clockwise or counter-clockwise (as in Figures 1A, 3A-3C).
In regards to claim 5, Tsuchida as modified discloses the method according to claim 4, Tsuchida as modified also discloses that operating the second actuator (3) so that the part (W) is able to be machined on the side of the part that was not able to be machined when the part was coupled to the first fixture includes rotating the second actuator to an upright position (see Figures 3A-3C).
In regards to claim 8, Tsuchida discloses the method according to claim 1, Tsuchida also discloses that the first fixture and the second fixture include a vise (10) for holding the part (W) (column 4, lines 26-27).
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) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feinauer et al. US 7,367,929 as applied to claim 3 above.
In regards to claim 4, Feinauer discloses the method according to claim 3, Feinauer also discloses that operating the first actuator and the second actuator (34 and 50 respectively) so that the part secured to the first fixture (42) is aligned with the second fixture (52) includes rotating the second actuator (50) 90° from an upright position (e.g. when machining is finished and actuator 50, goes to first actuator 34 to start machining a new part) clockwise or counter-clockwise (as in Figures 1-2, column 7, lines 8-15).
However, Feinauer fails to explicitly disclose rotating the first actuator 90° from an upright position clockwise or counter-clockwise.
However, since Feinauer does disclose that the first actuator (34) pivots about axis 38 and thus can accordingly be pivoted out of the horizontal position into a vertical position and into any desired intermediate positions (column 6, lines 46-52 see also column 10, lines 44-48), to machine a workpiece, it would have been obvious to a person having ordinary skill in the art to have the first actuator rotate from an upright position clockwise or counter-clockwise as desired, such as 90°, depending on the type of machining performed to a workpiece, as this concept is known to those skilled in the art, and Feinauer has explicitly stated that the first actuator (34) can be pivoted out of the horizontal position into a vertical position and into any desired intermediate positions.
In regards to claim 5, Feinauer as modified discloses the method according to claim 4, Feinauer as modified also discloses that operating the second actuator (50) so that the part (44) is able to be machined on the side of the part that was not able to be machined when the part was coupled to the first fixture includes rotating the second actuator to an upright position (see Figures 1-3).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
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