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 .
Comment re Proposed Examiner’s Amendment
As noted in the Interview Summary attached to this Office Action, on January 13, 2026, Examiner proposed an Examiner’s Amendment to Applicant’s representative. On January 20, 2026, Applicant’s representative indicated to Examiner that Applicant would prefer to receive an Office Action at this time. That said, attention is directed to that proposed Examiner’s Amendment (which proposal was incorporated into the aforementioned Interview Summary) for details and suggestions as to how to overcome any issues outlined in this Office Action.
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:
“machining device” in claim 1.
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 1-5 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.
In claim 1, last two lines, the claim recites “an opening portion configured to filter the coolant is provided around the magnetic separator”. However, it is unclear as claimed whether “around” (in the aforementioned limitation) is intended to mean “in the vicinity of”, or whether “around” is instead intended to mean something along the lines of (partially) encircling or extending around the outside/periphery of.
In claim 1, last two lines, in the event that “around” (in the limitation “an opening portion configured to filter the coolant is provided around the magnetic separator”) is intended to mean “in the vicinity of”, it is noted that the term “around” in claim 1, last line, is a relative term which renders the claim indefinite. The term “around” (as in “in the vicinity of”) is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, it is unclear how close to the magnetic separator the opening portion must be in order for the opening portion to be considered to be “around”/in the vicinity of the magnetic separator, and it is unclear how far away from the magnetic separator that the opening portion must be in order to be excluded by the limitation.
In claim 2, the claim recites “wherein a bottom of the sub-tank is inclined from a position on a side where the discharge window is formed toward a position where the machining chip removal section is configured”. However, it is unclear as claimed of what the side is a side, i.e., from a position on a side of what?
In claim 3, the claim sets forth that the sub-tank is a “container shaped case”. However, noting that containers can take any of an infinite number of shapes, the metes and bounds of the limitation are unclear, as it is unclear what specific shape(s) are intended to be included vs. excluded.
The term “narrow” in claim 3 is a relative term which renders the claim indefinite. The term “narrow” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, it is unclear how narrow a given width must be in order to be considered to be a “narrow” width, and it is unclear how wide a given width must be in order to be excluded by the term “narrow width”.
In claim 3, the claim sets forth “the sub-tank is a container-shaped case with a narrow width of which an upper surface side is opened…”. However, it is unclear as set forth in this limitation to what “which” is intended to refer, e.g., the width, the case, or the sub-tank.
The term “thin” in claim 3 is a relative term which renders the claim indefinite. The term “thin” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, it is unclear how thin a given cube-shaped magnet must be in order to be considered to be a “thin” cube-shaped magnet, and it is unclear how wide/thick a given cube-shaped magnet must be in order to be excluded by the term “thin cube-shaped magnet”.
In claim 3, line 3, the claim sets forth “the machining chip removal section is a thin cube-shaped magnet”. However, noting that claim 1 already previously recited “a machining chip removal section in which a magnetic separator made of a magnet is accommodated…”, it is unclear as set forth in claim 3 whether (as the claim literally appears to say) the claim intends to recite an additional magnet (additional to the magnet of claim 1) vs. whether (as disclosed in paragraph 0023) the claim actually intends to recite that the magnet of claim 1 is a “thin cube-shaped magnet” (i.e., intends to further limit the already-recited magnet of claim 1, rather than further reciting an additional magnet).
In claim 3, the claim recites “and the machining chip removal section is a thin cube-shaped magnet in which the magnetic separator can be inserted into and removed from a separate case made of a non-magnetic material”. However, it is unclear as set forth in the claim to what “which” is intended to refer, such that it is unclear into what the claim intends to indicate that the magnetic separator can be inserted into and removed from a separate case.
In claim 4, lines 3 and 5, the limitation “the separate case” lacks sufficient antecedent basis in the claim.
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 1-5 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 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.
In claim 1, last two lines, the claim recites “an opening portion configured to filter the coolant is provided around the magnetic separator”. However, as noted in a separate rejection of claim 1 under 35 USC 112(b) hereinabove, it is unclear as claimed whether “around” (in the aforementioned limitation) is intended to mean “in the vicinity of”, or whether “around” is instead intended to mean something along the lines of (partially) encircling or extending around the outside/periphery of. That said, in the event that “around” in this limitation is intended to mean something along the lines of “(partially) encircling or extending around the outside/periphery of”, then it is noted that the specification does not appear to teach such in a manner so as to demonstrate possession thereof. It is noted that in paragraph 0022 of the specification as filed, the specification teaches that a respective opening portion 27 is provided in each of inner side surface 351 (of sub-tank 35), outer side surface 352 (of sub-tank 35), and rear surface 356 (of sub-tank 35). See also Figures 4 and 2, noting that there are plural opening portions 27 (i.e., one in each of 351, 352, and 356). Furthermore, paragraph 0023 teaches that “the magnetic separator 31 is surrounded by opening portions 27 from three sides”. Additionally, paragraph 0026 teaches that machining chips 50 “adhere to the surface of separate case 32 around magnetic separator (refer to Fig. 4)”. That said, it is noted that while the three opening portions 27 together (collectively) extend partially around (i.e., around three sides of) the magnetic separator 31, none of the individual opening portions 27 are “provided around” (i.e., so as to “extend around” or the like) the magnetic separator 31. See Figures 2 and 4, noting that there is no “opening portion” 27 that (by itself, i.e., without additional ones of the opening portions 27) is configured to filter (via filtering plate 28) the coolant and that is “provided around the magnetic separator”, as set forth in claim 1, as best understood in view of the aforementioned clarity issues re 35 USC 112(b).
In claim 2, the claim recites “wherein a bottom of the sub-tank is inclined from a position on a side where the discharge window is formed toward a position where the machining chip removal section is configured”. However, as noted in a separate rejection of claim 2 under 35 USC 112(b) hereinabove, it is unclear as claimed of what the side is a side, i.e., from a position on a side of what? That being said, it is noted that the bottom inclined surface 355 of the sub-tank 35 is not inclined from a position on the side 351 of the sub-tank 35 where the discharge window 25 is formed toward a position where the machining chip removal section 8 is formed. See Figure 4. In particular, it is noted that the discharge window 25 is located in side 351 of the sub-tank, and the inclination of the bottom 355 of the sub-tank appears to actually be inclined from sub-tank front surface 353 (rather than from side 351) towards the machining chip removal section 8, rather than being inclined from side 351 (where discharge window 25 is located) towards the chip removal section 8.
In claim 3, the claim recites “and the machining chip removal section is a thin cube-shaped magnet in which the magnetic separator can be inserted into and removed from a separate case made of a non-magnetic material”. This limitation has a number of clarity issues, as discussed in detail in the above rejection(s) of claim 3 under 35 USC 112(b). That said, noting that claim 1 already previously recited “a machining chip removal section in which a magnetic separator made of a magnet is accommodated in the sub-tank…”, it appears that as literally written, claim 3 recites an additional magnet, indicating that the machining chip removal section (8) “is” a thin cube-shaped magnet.
However, firstly, it does not appear that the specification as filed teaches that the machining chip removal section (8) is, itself, a magnet, as opposed to the machining chip removal section (8) simply being a “section”/location (paragraphs 0020-0023, 0026-0028, 0030, Figures 2-4) that is provided with a magnetic separator (31) made of a magnet (31) (paragraph 0022-0023, Figures 2-5). Additionally, the specification does not teach that there are plural magnets. It appears that the disclosure only teaches one magnet, i.e., the magnetic separator 31 (which is disclosed in paragraph 0023 of the specification as a thin cube-shaped magnet having handle 311). Furthermore, the specification does not teach that the machining chip removal section (8) is a thin cube-shaped magnet “in which” the magnetic separator (31) can be inserted into and removed from a separate case (32), i.e., the specification does not teach any magnet in which (magnet) the magnetic separator 31 can be inserted into and removed from a case 32, i.e., the insertion and removal of the magnetic separator 31 from case 32 does not occur “in” any magnet, as apparently claimed in claim 3. See, for example, paragraphs 0023-0024, 0026, and Figures 2-5.
Thus, the specification does not teach the limitations of present claim 3 in a manner so as to demonstrate possession thereof.
Comment Regarding Non-Indication of Allowable Subject Matter
A thorough search has been conducted re the elected invention/claims. That being said, though no art rejections are considered to presently apply to claims 1-5, no indication regarding the allowability of the subject matter of claims 1-5 with respect to the prior art is being made at this time due to the rejection(s) thereof based on 35 USC 112(a), set forth above, particularly given that is unclear what changes to the claims might be necessary to overcome the above-described issues with respect to 35 USC 112(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA E CADUGAN whose telephone number is (571)272-4474. The examiner can normally be reached Monday-Thursday, 5:30 a.m. to 4:00 p.m. ET.
Examiner interviews are available via telephone, and via 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, 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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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
eec
January 21, 2026