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
Applicant’s election without traverse of Species II in the reply filed on February 11, 2026 is acknowledged.
Claims 2-8 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species I and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 11, 2026.
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 limitations are clamping device, grinding device, grinding tool grinding device, and sensing assembly, in claims 1 and 9.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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 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 9-16 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 9 recites, “the sensing assembly is capable of moving on a machining surface of the grinding assembly”. This is discussed in [0013] and [0056]-[0057] of the instant application. The machining surface of the grinding assembly is not numbered. The sensing contacts 321 are shown most clearly in reference to the grinding assembly 31 in Figure 5. While (321) can move along the sliding rails 3221 shown in Figure 9 and it seemingly outward of the housing 326 in Figure 6, these sensing contacts 321 cannot move downward to where the grinding assembly is. Therefore, the disclosed device does not appear to have a sensing assembly capable of moving on a machining surface of the grinding assembly. It is noted, the examiner interprets “moving on” a surface to require contact between the device and the surface. Since the drawings depict an invention that is in direct contradiction to performing the claimed function, the examiner finds that the claim limitation discussed above is not enabled.
Claims dependent from claim 9 are also rejected.
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 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, “the sensing assembly is capable of moving on a machining surface of the grinding assembly”. This is discussed in [0013] and [0056]-[0057] of the instant application. The machining surface of the grinding assembly is not numbered. The sensing contacts 321 are shown most clearly in reference to the grinding assembly 31 in Figure 5. While (321) can move along the sliding rails 3221 shown in Figure 9 and it seemingly outward of the housing 326 in Figure 6, these sensing contacts 321 cannot move downward to where the grinding assembly is. Therefore, the disclosed device does not appear to have a sensing assembly capable of moving on a machining surface of the grinding assembly. It is noted, the examiner interprets “moving on” a surface to require contact between the device and the surface. It is unclear what is meant by the applicant as the claim language in plain English is not supported.
Claims dependent from claim 9 are also rejected.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (U.S Pre-Grant Publication 20110306277) hereinafter Yoshida in view of Su et al. (CN214186720) hereinafter Su.
Regarding claim 1, Yoshida discloses:
A square bar grinding device {Figure 2 (1) is a grinding device for a square bar, see Figure 4d, (W) is a square bar; [0086]}, comprising:
a loading rack {The loading rack may be considered a large portion of the square bar grinding device. The loading rack may include Figure 6 (14), regions around (7), and regions around (10)/(11); [0071]},
a clamping device {Figure 6 (7); [0054]-[0055]},
a grinding device {Figure 6 (10) and (11); [0052]/[0056]}, and
wherein the loading rack is provided with stations {See description of first and second stations below},
the stations comprise a first station and a second station {see description of the first and station below},
the first station is used for placing a to-be-machined square bar {Figure 6, the first station may be considered the portions of (1) that include the region around (7) where the bar is clamped; [0054]-[0055]},
the clamping device is used for clamping and transferring the to-be-machined square bar in the station of the loading rack to the grinding device {Figure 6, the clamping device (7) clamps and transfers the to-be-machine squared bar (W) to the grinding device (10)/(11) via the work-piece table being moved to the left; [0041]}.
Yoshida does not disclose:
a grinding tool grinding device
The loading rack is provided with a second station
the grinding tool grinding device comprises an oil stone assembly,
the oil stone assembly is disposed at the second station
the clamping device is used for clamping and transferring the oil stone assembly in the station of the loading rack to the grinding device
Su pertains to grinding machines. Su teaches:
a grinding tool grinding device {Figure 5 (813), Su, second paragraph on page 14 of provided translation},
the loading rack is provided with a second station {Figure 5 (813) is considered to be disposed at a second station and part of a loading rack}
the grinding tool grinding device comprises an oil stone assembly {Figure 5 (813), Su, second paragraph on page 14 of provided translation},
the oil stone assembly is disposed at the second station {Figure 5 (813) is considered to be disposed at a second station}
the clamping device is used for clamping and transferring the oil stone assembly in the station of the loading rack to the grinding device {Figure 5, (21)/(23) is a clamping device for (101) which transfers the oil stone assembly (813) to the grinding device (4)/(5) in Figure 4}
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a oil stone assembly at the second station where it is transferred to the grinding device as taught by Su for the grinding device of Yoshida. One of ordinary skill in the art would be motivated to do so as the oil stone sharpens the grinding tool’s cutting edges. (Su, second paragraph on page 14 of provided translation)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fan et al. (CN11619596) teaches a grinding device with loading/unloading and sensors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY D HEINLE whose telephone number is (571)270-3508. The examiner can normally be reached Monday-Friday (9:00am-5:00pm).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alford Kindred can be reached at (571) 272-4037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
Prosecution Insights