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Claims 4, 10, 13, 16, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention and/or Species (Invention II and Species A-2, A-3, A-4, B-2, and C-1), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 15, 2026.
Applicant's election with traverse of Invention I and Species A-1, B-1, and C-1 (claims 1 – 3, 5 – 9, 11, 12, 14, 15, 17, and 18) in the reply filed on January 15, 2026 is acknowledged. The traversal is on the ground(s) that the subject matter between Invention I and II are sufficiently related that a thorough search of Invention I would necessarily encompass a thorough search of Invention II. This is not found persuasive because a primary form of evidence of a burden on the examiner is a showing of separate classification of the distinct inventions. Such is the case here. The elected claims are classified in B25B 1/02, while the non-elected claims are classified in B25B 1/10. A search of the elected invention would not require a search of the non-elected invention. Having two perform two separate searches in a single application would indeed be a burden on the examiner.
Applicant further argues that there is no serious burden on the examiner to examine each of the species together. Examiner again disagrees. A primary form of evidence of a serious burden of species is a showing of divergent subject matter. The Specification clearly and expressly teaches that subject matter of each of the elected species are divergent from the non-elected species (see pages 4 and 5 of the previous Restriction Requirement), such that no single embodiment or generic product of the invention encompasses all of the recited species. Having to perform multiple searches for each of the species of the claims would indeed be a burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
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:
“lateral adjustment apparatus” recited in claims 1 and 7
“vertical adjustment apparatus” recited in claims 5 and 11
“gross adjustment apparatus” recited in claims 6 and 12
“cutting tool” recited in claims 7 and 17
“stationary member” recited in claim 8
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.
The limitation “lateral adjustment apparatus” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“apparatus”).
(B) The generic placeholder is modified by functional language (‘for lateral adjustment’ and “configured to counteract ovality at an end of the workpiece”)
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “lateral adjustment apparatus” will be interpreted so as to comprise ‘a linear actuator, a plurality of fasteners, and a stationary member; wherein the linear actuator comprises a leadscrew, and wherein the stationary member comprises a block supporting the lead screw of the linear actuator,’ as taught by the Specification (paragraphs 185 – 188), or an equivalent thereof.
The limitation “vertical adjustment apparatus” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“apparatus”).
(B) The generic placeholder is modified by functional language (‘for vertical adjustment’ and “configured to counteract ovality at an end of the workpiece”)
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “gross adjustment apparatus” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“apparatus”).
(B) The generic placeholder is modified by functional language (‘for gross adjustment’ and “configured to counteract ovality at an end of the workpiece”)
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “gross adjustment apparatus” will be interpreted so as to comprise ‘a first motor and a second motor,’ as taught by the Specification (paragraphs 134), or an equivalent thereof.
The limitation “cutting tool” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“tool”).
(B) The generic placeholder is modified by functional language (‘for cutting’)
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “cutting tool” will be interpreted so as to comprise ‘a drill bit, a screw bit, a milling bit, or a lathe bit,’ as taught by the Specification (paragraph 67), or an equivalent thereof.
The limitation “stationary member” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a term used as a substitute for “means” that is a generic placeholder for performing the claimed function (“member”).
(B) The generic placeholder is modified by functional language (‘configured to maintain a position of the linear actuator along the a-axis as the linear actuator operates”)
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “stationary member” will be interpreted so as to comprise ‘a block supporting the leadscrew of the linear actuator,’ as taught by the Specification (figures 5a and 5b, element 930 being the ‘stationary member’; paragraph 188), or an equivalent thereof.
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 – 3, 5 – 9, 11, 12, 14, 15, 17, and 18 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 limitation “a workpiece” in the first paragraph of the body of the claim. It is unclear as to whether Applicant intends the limitation to refer to the ‘workpiece’ previously set forth in the preamble, or whether Applicant intends to set forth a second ‘workpiece’ which is separate and independent from the ‘workpiece’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to the ‘workpiece’ previously set forth in the preamble.
Claim 2 recites the limitation “a jaw.” It is unclear as to whether Applicant intends the limitation to refer to one of the ‘first jaw’ or the ‘second jaw,’ or whether Applicant intends to set forth an additional ‘jaw’ which is separate and independent from the ‘first and second jaws’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “one of the first jaw and the second jaw.”
Claims 2 and 3 each recite the limitation “the jaw.” Because the claims previously sets forth a ‘first jaw,’ ‘a second jaw,’ and ‘a jaw,’ it is unclear as to which ‘jaw’ Applicant intends the limitations to refer to. For the purposes of this Office Action, Examiner will interpret the limitations as “the one of the first jaw and the second jaw.”
Claim 3 further recites the limitation “the center point.” There is insufficient antecedent basis for the limitation in the claim.
Claims 3 and 5 each recites the limitation “an end of the workpiece.” It is unclear as to whether Applicant intends the limitations to refer to the “end of the workpiece” previously set forth in claim 1, or whether Applicant intends to set forth a second ‘end of the workpiece’ which is separate and independent from the ‘end of the workpiece’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitations so as to refer to the ‘end of the workpiece’ previously set forth in claim 1.
Claim 7 recites the limitation “a workpiece” in the first paragraph of the body of the claim. It is unclear as to whether Applicant intends the limitation to refer to the ‘workpiece’ previously set forth in the preamble, or whether Applicant intends to set forth a second ‘workpiece’ which is separate and independent from the ‘workpiece’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation so as to refer to the ‘workpiece’ previously set forth in the preamble.
Claim 8 recites the limitation “a jaw.” It is unclear as to whether Applicant intends the limitation to refer to one of the ‘first jaw’ or the ‘second jaw,’ or whether Applicant intends to set forth an additional ‘jaw’ which is separate and independent from the ‘first and second jaws’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “one of the first jaw and the second jaw.”
Claims 8 and 9 each recite the limitation “the jaw.” Because the claims previously sets forth a ‘first jaw,’ ‘a second jaw,’ and ‘a jaw,’ it is unclear as to which ‘jaw’ Applicant intends the limitations to refer to. For the purposes of this Office Action, Examiner will interpret the limitations as “the one of the first jaw and the second jaw.”
Claim 17 recites the limitation “two or more cutting tools.” It is unclear as to whether Applicant intends the limitation to refer to, and further define’ the ‘cutting tool’ previously set forth in claim 7, or whether Applicant intends to set forth additional ‘cutting tools’ which are separate and independent from the ‘cutting tool’ previously set forth. For the purposes of this Office Action, Examiner will interpret the limitation as “two or more of the cutting tools.”
As explained above, the limitation “vertical adjustment apparatus” 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. While the Specification provides antecedent basis for the limitation and the claimed function (Specification, paragraphs 155 – 160), the Specification does not teach sufficient structure of the limitation to perform the claimed function. 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)).
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.
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 5, 6, 11, 12, and 14 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 explained above, the limitation “vertical adjustment apparatus” invokes interpretation under 35 U.S.C. 112(f). As further explained above, the Specification does not teach sufficient structure for the limitation to perform the claimed function. Therefore, the limitation is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors at the time the application was filed, had possession of the claimed invention.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gibson (U.S. Patent Number 4,582,289).
As to claim 1, Gibson teaches an apparatus for retaining a workpiece (abstract), the apparatus comprising: a first jaw configured to engage the workpiece from a first side of the workpiece (figures 1 and 2, element A being the ‘first jaw’; column 2, line 65 – column 3, line 2); a second jaw configured to engage the workpiece from a second side of the workpiece , the second side opposite the first side (figures 1 and 2, element B being the ‘second jaw’; column 2, line 65 – column 3, line 2); and a jaw positioner configured to move the first jaw and the second jaw laterally to engage and retain the workpiece in a stationary position (figures 1 and 2, elements E, C, 44, F, D, and 14 being the ‘jaw positioner’; column 3, lines 2 – 15 and 29 – 44), the jaw positioner comprising a lateral adjustment apparatus, comprising a linear actuator comprising a leadscrew, a plurality of fasteners, and a stationary member comprising a block supporting the leadscrew, configured to counteract ovality at an end of the workpiece (figures 1 and 2, elements E and 14 being the ‘linear actuator,’ wherein element E is the ‘leadscrew,’ element 18 being the ‘stationary member’ and ‘block,’ see below; column 3, lines 37 – 40).
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Examiner notes that this can be found because Gibson expressly teaches that the lateral adjustment apparatus acts to change a lateral position of the first jaw when the end of the workpiece is positioned between the first and second jaws (column 3, lines 2 – 15 and 29 – 44), which applies a lateral force onto the end of the workpiece, which Applicant’s Specification teaches acts to counteract an ovality at the end of the workpiece (paragraph 14).
As to claim 2, Gibson teaches that the lateral adjustment apparatus comprises: a linear actuator configured to extend the first jaw (figures 1 and 2, elements E and 14 being the ‘linear actuator’; column 3, lines 2 – 15 and 29 – 44); and a plurality of fasteners configured to secure a jaw base plate of the first jaw to a slidable jaw member translatable by the jaw positioner (figure 2, see below).
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As to claim 3, Gibson further teaches that the linear actuator is a leadscrew and is configured to move the first jaw along the horizontal x-axis towards a center point to increase a lateral force on the workpiece and shorten a major axis that defines ovality at the end of the workpiece (figures 1 and 2, element 14 being the ‘leadscrew’; column 3, lines 2 – 15 and 29 – 44).
Allowable Subject Matter
Claims 7 – 9, 15, 17, and 18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 7, Park (U.S. Patent Application Publication Number 2019/0381615) teaches an apparatus for cutting a workpiece (abstract), the apparatus comprising: a programmable controller configured to form a machining feature on the workpiece (paragraph 83); a housing comprising: a chuck comprising (figure 1, one of elements 11 and 15 being the ‘chuck’; paragraphs 47 – 48); a center point (figure 1, left tip of element 15 being the ‘center point’); a vertical y-axis that extends vertically from the center point (figure 1, depth axis through left tip of element 15); an x-axis that extends horizontally from the center point (figure 1, horizontal axis through left tip of element 15); an x-axis plate configured to move laterally relative to the center point an configure to couple to at least one cutting tool comprising a drill bit (figures 1 and 5, element 11 being the ‘x-axis plate’; paragraphs 48 and 49); a first driver coupled to the chuck and configured to rotate the chuck about a z-axis of the chuck in response to a first control signal from the programmable controller, the z-axis extending perpendicular to the x-axis and perpendicular to the y-axis (figures 1 and 5, vertical axis being the ‘z-axis’ and a first of elements 12 being the ‘first driver’; paragraph 49); a second driver coupled to the x-axis plate and configured to move the x-axis plate laterally relative to the center point in response to a second control signal from the programmable controller (figures 1 and 5, second of elements 12 being the ‘second driver’; paragraph 49); and a vise (figure 1, element 19 being the ‘vice’; paragraph 47).
While Park does not teach the structure of the vice, Gibson teaches the vice recited in claim 7, as explained in the rejection claim 1 above.
However, the prior art does not teach the apparatus comprising a third driver configured to move the chuck along the z-axis in response to a third control signal from the programmable controller, as recited by claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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