Prosecution Insights
Last updated: April 19, 2026
Application No. 18/558,725

APPARATUS AND METHOD FOR FINISHING A WORKPIECE

Non-Final OA §102§103§112
Filed
Nov 02, 2023
Examiner
WEDDLE, ALEXANDER MARION
Art Unit
1712
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Homag GmbH
OA Round
1 (Non-Final)
63%
Grant Probability
Moderate
1-2
OA Rounds
3y 2m
To Grant
90%
With Interview

Examiner Intelligence

Grants 63% of resolved cases
63%
Career Allow Rate
584 granted / 927 resolved
-2.0% vs TC avg
Strong +27% interview lift
Without
With
+26.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
58 currently pending
Career history
985
Total Applications
across all art units

Statute-Specific Performance

§101
0.9%
-39.1% vs TC avg
§103
43.5%
+3.5% vs TC avg
§102
15.7%
-24.3% vs TC avg
§112
32.5%
-7.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 927 resolved cases

Office Action

§102 §103 §112
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. Drawings The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “single clamping setup” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Objections Claim 12 is objected to because of the following informalities: In Claim 12, the word “ appartus ” should be written “apparatus.” Appropriate correction is required. 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: Claim s 1 -6,11-12 : “ machining unit” (generic placeholder: “unit”, functional language: “machining . . . for machining”), associated with a milling unit or milling tool [0021] “ patterning unit” (generic placeholder: “unit”, functional language: “patterning . . . for patterning”), associated with a “drop-on-demand printing unit” including a piezo or jet print head print head [0013,0030] “ conveying unit” (generic placeholder: “unit”, functional language: “conveying . . . for inducing a relative movement”), associated with a belt or chain [0024] Claim 9 : “ monitoring unit” (generic placeholder: “unit”, functional language: “ monitoring . . . for monitoring ”), associated with a camera [00 16 ] 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 appl icant regards as his invention. Claim s 1-12 is 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 “for inducing a relative movement between the workpiece and the machining unit as well as the patterning unit.” The limitation is indefinite as ambiguous, because the phrase “as well as the patterning unit” does not clearly describe a relationship with either of the previously recited “workpiece” or “machining unit “( e.g. not clear whether includes relative movement between the workpiece and patterning unit or between machining unit and patterning unit). Examiner considers the limitation to include the interpretation relative movement between the workpiece and the machining unit as well as between the workpiece and the patterning unit. Claim 3 recites the limitation “single clamping setup.” The limitation is indefinite as vague and ambiguous, because it is not clear what the word “single” is meant to modify, whether “clamping” or “setup,” and it is not clear what is meant by “setup.” The specification only uses the phrase once [0010], and does not clearly describe what is required or clearly provide references to it in the drawings. The only structures which the specification describes and which may be considered to function as a “single clamping setup” is the single setup, including a plurality of rollers that press a workpiece against a conveyor chain, although the phrase “single clamping setup” is not used in the paragraph, which describes the rollers [0024]. Examiner considers a single clamping setup to include a set of rollers ( e.g. hold down rollers). Claim 12 recites the limitation “relative movement between the workpiece, and the machining unit and the patterning unit.” The limitation is indefinite as ambiguous, because it is not clear what relative movement is induced, whether BOTH between the workpiece and the machining unit AND ALSO between the workpiece and the patterning unit or ALL of between workpiece and the machining unit, between the workpiece and the patterning unit, AND between the patterning unit and the machining unit. Examiner considers the limitation to include either interpretation. Claims 2-11 and 13 are rejected as depending from rejected claims. 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 , 6, and 12 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Gauss et al. (US 2008/0239042) . Regarding Claim 1, Gauss et al. (US’819) teaches an apparatus for finishing a workpiece, comprising a machining unit for machining the workpiece ( i.e. “grinding module 12” or “grinding and roughening module 31,” including a circular or rectangular grinding means or belt, functional equivalents of a “milling unit”) [0024,0031-0033], a patterning unit for patterning a surface of the workpiece ( printing device 50 , including one with drop-on-demand functionality) [0021, a conveying unit for inducing a relative movement (chain or belt conveyor 60) between the workpiece and the machining unit as well as between the workpiece and the patterning unit [0022], and a control unit connected to the machining unit, the patterning unit, and the conveying unit and configured to control ( i.e capable of controlling) the machining unit, the patterning unit, and the conveying unit [0024,0031,0047,0050]. Regarding Claim 6, in US’819 the patterning unit comprises a drop-on-demand printing unit, which is capable of variably setting an output droplet size or frequency by virtue of having drop-on-demand functionality [0021]. Regarding Claim 12, US’819 teaches a method for finishing a workpiece using an apparatus according to Claim 1 ( see rejection of Claim 1 above under this heading) , comprising the steps of inducing a relative movement between the workpiece and the machining unit and between the workpiece and the patterning unit via the conveying unit (handling unit 60), machining ( i.e. grinding and/ or roughening) the workpiece by means of the machining unit [0024,0031-0033] and patterning the workpiece by means of the patterning unit [0021, wherein the control unit controls the machining unit, the conveying unit and the patterning unit during the method for finishing [0047-0050]. 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 . This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim (s) 2 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Vermeulen et al. (US 2015/0239230 ) . Regarding Claim 2, US’042 fails to teach a conveyor speed. Vermeulen et al. (US’230) is analogous art in the field of processing workpieces, including patterning (printing) [0002-0004], and suggests conveyor speeds up to 300 m/min, including between 120 m/min to 180 m/min [0077]. Additionally, US’230 provides evidence that conveyor speed is a result-effective variable, affecting accuracy [0041, 0077]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 to be capable of handling work pieces for printing at speeds of at least 1 0 m/min, because US’230 is analogous art, suggesting conveying workpieces for printing with a throughput greater than 1 0 m/min. Additionally, it would have been obvious to a person of ordinary skill at the time of invention to modify the apparatus of US’042 with a conveyor capable of speeds greater than 15 m/min through routine optimization, considering tradeoffs of output volume vs. accuracy. Regarding Claims 9-11, US’042 fails to teach a camera. US’230 teaches a camera for monitoring the surface of a workpiece patterned by the patterning unit (combination of first and second printing modules , Abstract ) the monitoring unit being connected to a control unit capable of correcting at least one operating parameter of the patterning unit based on the monitoring result of the monitoring unit ( e.g. capable of patterning over a first pattern to correct the first pattern) [0008] . It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 with a camera connected to a control unit, because US’230 suggests a camera to monitor patterning of a patterning unit and a control unit connected to the camera and capable of correcting at least one operating parameter of the patterning unit based on the monitoring result of the monitoring unit. Claim (s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Brooks (US 2005/0175424 ) . Regarding Claim 3, US’042 fails to teach a single clamping setup. A setup of feed rollers or hold down rollers were conventional at the time of invention. For example, Brooks (US’155) is analogous art in the field of processing workpieces, including machining workpieces, and suggests a single clamping setup, including a plurality of hold-down rollers above a belt to serve the purpose of holding down workpieces on a conveyor belt and provides evidence that such a setup is conventional (Fig. 4; [0019]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 with a conventional “single clamping setup,” including a combination of conventional elements, including a conveyor belt and a plurality of hold-down rollers. Claim (s) 4- 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Pankoke ( WO 2012/168020 ) . Regarding Claim 4, US’042 fails to teach that the control unit is configured to set ( i.e. capable of setting) at least one parameter of the patterning unit taking into account a conveying speed of the conveying unit. Pankoke ( WO’020 ) is analogous art in the field of patterning/ printing workpieces, and teach a control unit capable of setting a parameter of the patterning unit taking into account a conveying speed to account for fluctuations of actual delivery speed of the work piece (Abstract ; [0019] ). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 with a control unit capable of setting a parameter of the patterning unit based on a conveying speed, because WO’020 suggests such a control unit to account for fluctuations in actual delivery speed of the work piece. Regarding Claim 5, US’042 fails to teach that the control unit is configured to change the target conveying speed of the conveying unit if the control unit cannot determine suitable operating parameters. Pankoke (WO’020) is analogous art in the field of patterning/ printing workpieces, and teach a control unit capable of setting a parameter of the patterning unit taking into account a conveying speed to account for fluctuations of actual delivery speed of the work piece (Abstract; [0019]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 with a control unit capable of setting a parameter of the patterning unit based on a conveying speed, because WO’020 suggests such a control unit to account for fluctuations in actual delivery speed of the work piece and such a controller is capable of changing a target conveying speed of the conveying unit if the parameters are actually not in fact suitable. Claim (s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Adkins (US 6,379,444 ) . Regarding Claims 6-7, US’042 fails to teach any specific drop size. Adkins (US’444) is analogous art in the field of drop on demand printing and is reasonably pertinent to inventor’s problem of patterning with drop on demand printing, and teaches a drop size of about 10 to 150 pL for a resolution of between 200 and 300 dpi (Claim 37; col. 7, line 66 to col. 8, line 4). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 so that the droplet size can be variably set to values smaller than 200 pL , because US’444 suggests these values for drops on demand to achieve a desirable resolution. Claim (s) 6 - 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Okuda (US 2002/0135638 ) . Regarding Claims 6-8, US’042 fails to teach details of drop on demand printers. Okuda (US’638) is analogous art in the field of drop-on-demand inkjet printers and pertinent to inventor’s problem of patterning work pieces [0004] . US’638 teaches an inkjet head capable of stable ejection at an ejection frequency of 16 kHz for a droplet volume of 25 pL [0085]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’042 with a drop-on-demand ink jet heads capable of ejection of 25 pL droplets at a frequency of 16 kHz to achieve a stable ejection at a desirable resolution. Claim (s) 11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gauss et al. (US 2008/0239042) in view of Vermeulen et al. (US 2015/0239230) as applied to Claim s 9 and 10 above, and further in view of Lehnhoff ( WO 2019/234147, citing US 2021/0245493 as an English translation ) . Regarding Claim s 11 and 13, the combination of US’042 in view of US’230 fails to teach a hyperspectral camera. Lehnhoff (WO’147) is analogous art in the field of patterning a work piece and is reasonably pertinent to inventor’s problem of monitoring a patterning process (Abstract; [0005] . WO’147 teaches a hyperspectral camera capable of capturing an image of a pattern after patterning a work piece with a patterning unit ( e.g. inkjet printer) , whose data can be sent to a control unit ( e.g. computer) of the patterning unit to correct at least one patterning parameter of the patterning unit based on the monitoring result (image) of the monitoring unit (camera) [ 0003,0065, 0109 -0110 ] , because a hyperspectral camera is capable of recording and storing very high detail accuracy and resolution [0014]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’042 in view of US’230 with a hyperspectral camera connected to the control unit, wherein the control unit is configured to correct at least one operating parameter of the patterning unit based on the monitoring result of the monitoring unit, because US’230 teaches a camera connected to the control unit and because WO’147 suggests capturing an image of a pattern patterned with a pattern ing unit with a hyperspectral camera , capable of recording and storing high detail accuracy and resolution, and sending image data of the captured image of the patterned pattern to the control unit to correct an operating parameter of the patterning unit. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gauss et al. (US 2008/0152819) (apparatus and method for coating workpieces, including inkjet printer and milling unit) No claim is allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT ALEXANDER M WEDDLE whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-5346 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 9:30-6:30 . 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, FILLIN "SPE Name?" \* MERGEFORMAT Michael Cleveland can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1418 . 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. FILLIN "Examiner Stamp" \* MERGEFORMAT ALEXANDER M WEDDLE Examiner Art Unit 1712 /ALEXANDER M WEDDLE/ Primary Examiner, Art Unit 1712
Read full office action

Prosecution Timeline

Nov 02, 2023
Application Filed
Mar 25, 2026
Non-Final Rejection — §102, §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12600056
COMBINED PROCESS OF HYDROLYSIS AND ESTERIFICATION OF WOOD
2y 5m to grant Granted Apr 14, 2026
Patent 12595543
STEEL-SHEET NON-PLATING DEFECT PREDICTION METHOD, STEEL-SHEET DEFECT REDUCTION METHOD, HOT-DIP GALVANIZED STEEL SHEET MANUFACTURING METHOD, AND STEEL-SHEET NON-PLATING DEFECT PREDICTION MODEL GENERATION METHOD
2y 5m to grant Granted Apr 07, 2026
Patent 12594734
METHOD FOR PRODUCING A LENS FOR A LAMP, LENS, LAMP AND MOTOR VEHICLE
2y 5m to grant Granted Apr 07, 2026
Patent 12590362
DEPOSITION METHOD AND DEPOSITION APPARATUS
2y 5m to grant Granted Mar 31, 2026
Patent 12590366
CANISTER, PRECURSOR TRANSFER SYSTEM HAVING THE SAME AND METHOD FOR MEASURING PRECURSOR REMAINING AMOUNT THEREOF
2y 5m to grant Granted Mar 31, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
63%
Grant Probability
90%
With Interview (+26.8%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 927 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month