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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a lathe, classified in B23B3/00.
II. Claims 11-20, drawn to a tailstock, classified in B23B23/045.
The inventions are independent or distinct, each from the other because Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because, inter alia, the tailstock does not require the collar to have a hole located at its center. The subcombination has separate utility such as being used in drilling machine or a device without a headstock.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the distinct inventions require search within various classes and/or sub-classes as well as differing query (word) searches within various classes and/or sub-classes, which places a serious burden on the examiner.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with David Fitzgibbon on February 25, 2026 a provisional election was made without traverse to prosecute the invention of I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-20 have been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 1 is objected to because of the following informalities: a comma should be placed after the term “shaft” in Line 6. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the term “bearings” in Line 19 should not be in plural form. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the term “the” must be placed in front of the second recitation of the term “radial” in 19. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the term “the” must be placed in front of the term “radial” in Line 21. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: the term “morse” should be capitalized as Morse refers to a name. 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 1-10 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 1 recites “the collar bookended on each side by at least one radial ball bearings” in Lines 18-19. The claim fails to set forth how many sides there are to the collar. As such, it is unclear whether the bookends are on first and second opposing ends or more sides. It is also unclear what is meant by “at least one” followed by the plural form of “bearings.” Appropriate correction required.
Claim 1 recites “radial ball bearings” in Lines 19 and 21, respectively. It is unclear whether the claim requires a plurality of radial ball bearings on each side or if this recitation means to refer back to the at least one. Appropriate correction required.
Claim 1 recites “the collar and radial ball bearings held together with at least one retainer ring on either side” in Lines 19-20. It is unclear what feature either side references. Appropriate correction required.
Claim 1 recites “retainer rings” in Line 21. It is unclear whether this recitation refers back to the at least one retainer ring or further retainer rings. Appropriate correction required.
Claim 1 recites “the attachment portion included a threaded section” in Lines 22-23. It is unclear whether a term is missing or if the term “included” should actually be “includes.” Appropriate correction required.
Claim 1 recites “allowing the spindle to rotate when the indent in the adjustment portion is not engaged with another element” in Lines 27-28. The term “when” creates a lack of clarity to the scope as it depends on a condition. If the “when” condition does not occur, it is unclear whether the limitation is required. Examiner suggests rephrasing to indicate capability. Furthermore, it is unclear what constitutes “another element.” Appropriate correction required.
Claims 2-10 begin with the phrase “[t]he tailstock of claim 1.” Yet, claim 1 does not set forth a tailstock, but instead a lathe. Appropriate correction required.
Claim 2 recites “the longitudinal adjustment shaft projection portion retainer rings radial ball bearing collar” in Lines 1-2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 2 recites “the rear” in Line 3. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 2 recites “the longitudinal shafter” in Line 3. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 2 recites “the front” in Line 4. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 3 recites “#2 morse taper” in Lines 1-2. What constitutes a #2 morse may change over time. Because the standard is not controlled by Applicant, the scope of the claim is indefinite. Appropriate correction required.
Claim 4 recites “the retainer ring closer to the headstock” in Lines 1-2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 4 recites “the retainer ring further from the headstock” in Lines 1-2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 5 recites “wherein retainer ring closer to the headstock” in Line 1. It is unclear whether this is a new retainer ring set forth or one of the at least one retainer ring previously set forth. Appropriate correction required.
Claim 5 recites “the interior surface of the head portion.” There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 6 recites “the retainer ring further from the headstock” in Line 1. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 6 recites “the exterior surface of the spindle.” There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 7 recites “the end opposite the head portion” in Line 2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 7 recites “the exterior surface” in Line 2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 8 recites “proceeds about 95% of the way up the projection portion” in Lines 1-2. The boundary of where a channel extends about 95% and not about 95% is not clearly delineated. Also, “the way” lacks proper antecedent basis. Appropriate correction required.
Claim 9 recites “the intersection” in Line 2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 10 recites “the intersection” in Line 2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sudholt (US Patent No. 3,630,112) in view of Disston, Jr. (US Patent No. 4,048,881) and Scherler (CH 232961 A).
(Claim 1) Sudholt discloses a tailstock having a head portion (12) and a projection portion (16). The projection portion includes a Morse taper (Col. 1, Lines 70-71). The tailstock further includes a collar (25) located within the head portion (Fig. 3). The collar (25) is bookended on each side by at least one radial ball bearings (22, 24). The collar and radial ball bearings are held together with at least one retaining ring (74 or shoulders 32, 20) on either side (Fig. 3). The collar, radial ball bearings, and retaining ring (74 or shoulders 32, 20) are surrounded by the head portion (Fig. 3). A spindle (28) has an adjustment portion (26, 50) and an attachment portion (86, 66). The attachment portion includes a threaded section (66; Fig. 6). The adjustment portion (26) is surrounded by the collar (25) and radial ball bearings (22, 24) allowing the spindle to rotate. Sudholt does not explicitly disclose a lathe, a housing, a longitudinal adjustment shaft, the head portion having a hole projecting radially inward from an exterior surface of the head portion towards the longitudinal axis, the hole in the collar, the indent in the spindle, and an adjustment pin as claimed.
Disston, Jr. (“Disston”) discloses a lathe (10) having a headstock (12) and a tailstock (15) aligned coaxially along a longitudinal axis (Fig. 1). The tailstock includes a housing (21) having an internal passage (25) beginning at a rear housing opening and proceeding through to a front housing opening (Fig. 3). The rear housing opening is further from the headstock than the front housing opening (Figs. 1, 3). A longitudinal adjustment shaft (42), a portion of which is located in the internal passage (Fig. 3), is connected to a crank (43) located outside of the internal passage and the crank is adapted to advance or retract the longitudinal adjustment shaft along the longitudinal axis (Fig. 3; Col. 2, Lines 45-49). A body insert (30) has a head portion (34) and a projection portion (35 to 32). The projection portion includes a taper (35). A portion1 of the projection portion is located in the internal passage of the housing and the head portion is closer to the headstock than the projection portion (Fig. 3). At a time prior to filing it would have been obvious to provide the tailstock disclosed in Sudholt with the lathe, housing and longitudinal adjustment shaft as taught by Disston in order to perform a turning operation and provide axial adjustment of the tailstock (Col. 2, Lines 45-49).
Scherler discloses a tailstock (Fig. 1) having a hole (for screw/pin 14, 15) projecting radially inward through the body (at 12). An adjustment portion has at least one indent (16) projecting radially inward from an exterior surface of the adjustment portion towards the longitudinal axis (Fig. 1). The spindle is capable of rotation upon removal of the adjustment pin (15) from the indent the indent in the adjustment portion and prevent the spindle from rotating upon insertion of the pin into the recess (Translation at page 1). At a time prior to filing it would have been obvious to provide the tailstock disclosed in Sudholt with a hole though the body and aligned with an indent in the spindle as taught by Scherler in order to convert the tailstock from a live center to a dead center and vice versa (Translation at page 1). Due to the eccentricity adjustment of Sudholt, the hole and indent would need to be placed at an axial position in-line with the collar (25). That is the simplest modification. As such, at a time prior to filing it would have been obvious for one having ordinary skill to further modify the Sudholt tailstock with the radial hole at the collar aligned with the hole in the body and the indent in order to provide the lock/unlock of the spindle. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness, including “obvious to try” - choosing from a finite number of solutions - with a predictable result).
(Claim 2) As best understood, the modified device of Sudholt has a longitudinal adjustment shaft projection portion retainer rings radial ball bearing collar and spindle have internal passages which are connected so there is a single continuous internal passage from the rear of the longitudinal shafter to the front of the spindle (Sudholt Fig. 3; Disston Fig. 3).
(Claim 3) The projection portion morse taper is of a morse variety taper (Col. 1, Lines 70-71). Yet, the reference is silent on what number Morse taper is employed. Nevertheless, the Morse tapers are well-known in the art, the fact of which examiner takes official notice. At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the Morse taper as a #2 taper as is well-known in the art to fit within the tailstock of the lathe and/or as obvious to try - choosing from a finite number of solutions (only eight Morse taper numbers 0 to 7) - with the predictable result of fitting the tailstock to the lathe. See KSR, 550 U.S. at 418.
(Claim 4) The diameter of the retainer ring (32) closer to the headstock is larger than the diameter of the retainer ring (74 or 20) further from the headstock (Fig. 3).
(Claims 5 and 6) Sudholt does not explicitly disclose a retainer ring closer to the headstock is seated in a groove located on the interior surface of the head portion and a retainer ring further from the headstock is seated in a groove located on the exterior surface of the spindle. Yet, retaining rings, such as circlips, in grooves as claimed are well-known in the art, the fact of which examiner takes official notice. At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the tailstock of Sudholt with retaining rings within grooves as claimed in order to maintain the position of the bearings and collar about the spindle with replaceable pieces.
(Claim 7) The projection portion includes a channel (Disston 36) that begins at the end opposite the head portion and proceeds up the exterior surface of the projection portion longitudinally towards the head portion (Disston at end 34).
(Claim 8) The channel proceeds about 95% of the way up the projection portion toward the head portion (Sudholt Fig. 3; Disston Fig. 3).
(Claim 9). Two rings (Sudholt 50, 56) project radially outward from the longitudinal axis (C) at the intersection of the attachment portion and the adjustment portion (Sudholt Fig. 3). The ring closer to the threaded section projects out further than the ring further from the threaded section (Sudholt Fig. 3)
(Claim 10) In an alternative interpretation, a ring (Sudholt 20) projects radially inward towards the longitudinal axis at the intersection of the projection portion and the head portion (Sudholt Fig. 3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 It is worth noting that “a portion” may be any miniscule part arbitrarily designated.