DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Category (A) (configuration of the mist collector 40/suction mechanism 66), the first sub-species (i) shown in Figure 6, and Category (B) (configuration of the drain 65 and suction mechanism 66), the first sub-species (i) shown in Figure 7, in the reply filed on June 27, 2026 is acknowledged.
Claims 3 and 5-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 27, 2026.
Information Disclosure Statement
For the Information Disclosure Statement (IDS) filed 7/29/2024, it is noted that the citations of JP 2007-216331 A, JP 2003-089032-A, and JP 2007-021321 A were lined through as those references had already been previously made of record in the IDS filed 11/10/2023.
Specification
The disclosure is objected to because of the following informalities:
In paragraph 0061 (as presented in the specification submitted 4/30/2024), the specification indicates that the rotary filter 56 “is housed in the tubular portion 55A of the housing 52”, and in paragraph 0062 (as presented in the specification submitted 4/30/2024), the specification indicates that the fan 57 “is housed in the tubular portion 55B of the housing 52”. It is noted that such is not consistent with either of Figures 6 or 11. (Note that in contrast, as shown in Figures 6 and 11, element 56 is housed in tubular portion 55B, and element 57 is housed in housing portion 55A.)
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:
“ejection part” in at least claim 1; and
“suction mechanism” in at least 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 1-2 and 4 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 limitation “ejection part” 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. The specification is devoid of adequate structure to perform the claimed function. In particular, the specification merely describes the claims function(s) that the ejection part carries out (i.e., ejecting a coolant; see, for example, paragraphs 0006, 0008, 0021, 0024-0026, 0045, 0047-0049, 0051-0052). While paragraphs such as paragraph 0024 teach that the ejection part 125 is constituted by one or more ejection mechanism (such as 125A, 125B, etc.), it is noted that the term “ejection mechanism” is itself a non-structural term that is linked to function without describing the specific structure. There is no disclosure of any particular structure, either explicitly or inherently, to perform the coolant ejection. Note that merely teaching that the ejection mechanism 125A “is provided in the spindle head 131”, as is taught in paragraph 0025, or that the ejection mechanism 125B is “attached to the ceiling portion of the cover body 130A, for example” (see paragraph 0026), does not serve to teach what structure constitutes the ejection mechanism/part itself, but rather, merely teaches a location. As would be recognized by those of ordinary skill in the art, there are many different ways to effect the ejection of coolant. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which specific structures perform(s) 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.
In claim 1, lines 4-5, the claim recites “a mist collector configured to suck a substance included in air as a result of the coolant being ejected from the ejection part into the processing area”. However, firstly, it is unclear as set forth in the claim with what “into the processing area” is intended to go, i.e., “coolant being ejected from the ejection part”, vs. “suck a substance included in air”. Resultantly, it is unclear as claimed whether the aforementioned “into the processing area” limitation is intended to indicate that the coolant that is being ejected from the ejection part is being ejected “into the processing area”, vs. whether the aforementioned “into the processing area” limitation is instead intended to indicate that the mist collector is configured to suck a substance included in air “into the processing area”.
Additionally, in claim 1, lines 4-5, in the claim limitation “a mist collector configured to suck a substance included in air as a result of the coolant being ejected from the ejection part into the processing area”, it is unclear as set forth in the claim with what “as a result of the coolant being ejected from the ejection part” is intended to go, i.e., “a substance included in air”, vs. “suck a substance included in air”. Resultantly, it is unclear as claimed whether the sucking of the substance is “as a result of the coolant being ejected from the ejection part”, vs. whether the claimed substance is instead being set forth as being “included in air” as a result of the coolant being ejected from the ejection part.
In claim 1, lines 8-9, the claim recites “a drain configured to discharge the substance that has passed through the first filter to the body”. However, it is unclear as set forth in the claim in this limitation with what “to the body” is intended to go, i.e., the substance, vs. configured to discharge. Resultantly, it is unclear as set forth in the claim whether the claim intends to indicate that the substance has passed through the first filter “to the body” (which interpretation would not require the drain to be configured to discharge the substance “to the body”), or whether the claim instead intends to indicate that the drain is configured to discharge the substance to the body (which substance has passed through the first filter).
In claim 1, last two lines, the claim recites “a suction mechanism configured to suck the substance that has passed through the first filter from the mist collector into the drain”. However, it is unclear as set forth in the claim with what “from the mist collector” is intended to go, i.e., “suction mechanism configured to suck” vs. “the substance that has passed through the first filter from the mist collector”. Resultantly, it is unclear as set forth in the claim whether the claim intends to require that the suction mechanism be configured to suck the substance from the mist collector (which substance has passed through the first filter), vs. whether the claim instead intends to require that the substance be configured to be passed through the first filter “from the mist collector” (i.e., that the claim intends to require that the suction mechanism is configured to suck the substance, which substance has passed from the mist collector through the first filter). Similarly, it is unclear as set forth in the claim with what “into the drain” is intended to go, such that it is thus unclear as claimed whether such references to where the suction mechanism must be configured to suck the substance (i.e., sucking the substance from the mist collector and into the drain), vs. whether such intends to reference another location for the passing of the substance (i.e., locations through/to/from where the substance is configured to be passed before the suction mechanism is configured to suck the substance).
In claim 4, the claim sets forth “the substance sucked from the body into the mist collector”. However, this limitation lacks sufficient antecedent basis in the claim noting that no substance that is, specifically, “sucked from the body into the mist collector” was previously recited in the claim, nor is it inherent that the previously recited substance is “sucked from the body into the mist collector”.
In claim 4, last three lines, the claim sets forth “the one end of the drain is coupled to the mist collector in such a manner as to discharge the substance that has passed through the first filter to the body, before the substance reaches the fan”. However, it is unclear as set forth in the claim with what “to the body” is intended to go. For example, it is unclear as set forth in the claim whether the claim intends to indicate that the one end of the drain is configured to discharge the substance “to the body” (which substance has passed through the first filter), vs. whether the claim instead intends to require that the drain is configured to discharge the substance, which substance has been passed through the first filter to the body.
In claim 4, last three lines, the claim sets forth “the one end of the drain is coupled to the mist collector in such a manner as to discharge the substance that has passed through the first filter to the body, before the substance reaches the fan”. However, it is unclear as set forth in the claim what is being set forth as occurring (or configured to occur) “before the substance reaches the fan”, i.e., the discharge of the substance via the one end of the drain, vs. the passing of the substance through the first filter to the body, vs. the discharge of the substance to the body, etc.
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 1-2 and 4 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.
Regarding claim 1 and the recited “ejection part configured to eject a coolant into the processing area”, as discussed above, this limitation invokes 35 USC 112(f). As described above in a rejection of claim 1 under 35 USC 112(b), the disclosure does not provide adequate structure to perform the claimed function of ejecting the coolant into the processing area. That said, the specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
In claim 1, lines 4-5, the claim recites “a mist collector configured to suck a substance included in air as a result of the coolant being ejected from the ejection part into the processing area”. However, firstly, it is unclear as set forth in the claim with what “into the processing area” is intended to go, i.e., “coolant being ejected from the ejection part”, vs. “suck a substance included in air”. Resultantly, it is unclear as claimed whether the aforementioned “into the processing area” limitation is intended to indicate that the coolant that is being ejected from the ejection part is being ejected “into the processing area”, vs. whether the aforementioned “into the processing area” limitation is instead intended to indicate that the mist collector is configured to suck a substance included in air “into the processing area”. That said, as disclosed, it does not appear that the specification teaches, in a manner so as to demonstrate possession thereof, that the mist collection 40 is intended to be configured to suck a substance (that is included in air) “into the processing area” AR.
Additionally, in claim 1, lines 4-5, in the claim limitation “a mist collector configured to suck a substance included in air as a result of the coolant being ejected from the ejection part into the processing area”, it is unclear as set forth in the claim with what “as a result of the coolant being ejected from the ejection part” is intended to go, i.e., “a substance included in air”, vs. “suck a substance included in air”. Resultantly, it is unclear as claimed whether the sucking of the substance is “as a result of the coolant being ejected from the ejection part”, vs. whether the claimed substance is instead being set forth as being “included in air” as a result of the coolant being ejected from the ejection part. That said, as disclosed, it does not appear that the specification teaches, in a manner so as to demonstrate possession thereof, that the mist collector 40 sucks a substance into the processing area AR (which substance is included in the air).
In claim 1, lines 8-9, the claim recites “a drain configured to discharge the substance that has passed through the first filter to the body”. However, it is unclear as set forth in the claim in this limitation with what “to the body” is intended to go, i.e., the substance, vs. configured to discharge. Resultantly, it is unclear as set forth in the claim whether the claim intends to indicate that the substance has passed through the first filter “to the body” (which interpretation would not require the drain to be configured to discharge the substance “to the body”), or whether the claim instead intends to indicate that the drain is configured to discharge the substance to the body (which substance has passed through the first filter). That said, as disclosed, it does not appear that the specification teaches, in a manner so as to demonstrate possession thereof, that the drain 65 is configured to discharge the substance, which substance has (already) passed through the first filter 56 to the body 130, i.e., does not appear to teach that the substance passes through the first filter 56 to the body 130, and then the drain 65 is configured to discharge that substance.
In claim 1, last two lines, the claim recites “a suction mechanism configured to suck the substance that has passed through the first filter from the mist collector into the drain”. However, it is unclear as set forth in the claim with what “from the mist collector” is intended to go, i.e., “suction mechanism configured to suck” vs. “the substance that has passed through the first filter from the mist collector”. Resultantly, it is unclear as set forth in the claim whether the claim intends to require that the suction mechanism be configured to suck the substance from the mist collector (which substance has passed through the first filter), vs. whether the claim instead intends to require that the substance be configured to be passed through the first filter “from the mist collector” (i.e., that the claim intends to require that the suction mechanism is configured to suck the substance, which substance has passed from the mist collector through the first filter). Similarly, it is unclear as set forth in the claim with what “into the drain” is intended to go, such that it is thus unclear as claimed whether such references to where the suction mechanism must be configured to suck the substance (i.e., sucking the substance from the mist collector and into the drain), vs. whether such intends to reference another location for the passing of the substance (i.e., locations through/to/from where the substance is configured to be passed before the suction mechanism is configured to suck the substance). That said, as disclosed, it does not appear that the specification teaches, in a manner so as to demonstrate possession thereof, that the suction mechanism 66 is configured to suck a substance that has been passed through the first filter 56 from the mist collector 40. See Figure 7, for example. Likewise, as disclosed, it does not appear that the specification teaches, in a manner so as to demonstrate possession thereof, that the suction mechanism 66 is configured to suck a substance, which substance has passed through the first filter 56 from the mist collector 40 into the drain 65.
In claim 4, last three lines, the claim sets forth “the one end of the drain is coupled to the mist collector in such a manner as to discharge the substance that has passed through the first filter to the body, before the substance reaches the fan”. However, it is unclear as set forth in the claim with what “to the body” is intended to go. For example, it is unclear as set forth in the claim whether the claim intends to indicate that the one end of the drain is configured to discharge the substance “to the body” (which substance has passed through the first filter), vs. whether the claim instead intends to require that the drain is configured to discharge the substance, which substance has been passed through the first filter to the body. It is also unclear as set forth in the last three lines of claim 4 what is being set forth as occurring (or configured to occur) “before the substance reaches the fan”, i.e., the discharge of the substance via the one end of the drain, vs. the passing of the substance through the first filter to the body, vs. the discharge of the substance to the body, etc. All that being said, as disclosed, it does not appear that the specification teaches, in a manner so as to demonstrate possession thereof, that the one end of the drain 65 is configured to discharge the substance, which substance has (already, i.e., before being drained) been passed through the first filter 56 to the body 130, which passing through of the substance occurs before the substance reaches the fan 57.
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.
Claims 1-2, as best understood in view of the above rejections based on 35 USC 112, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2007-216331 A (hereinafter, “JP ‘331”).
It is noted that JP ‘331 was cited in the Information Disclosure Statement (IDS) filed 11/10/2023, and that a translation of JP ‘331 was provided with that IDS. Attention is directed to the translation provided by Applicant with the 11/10/2023 IDS regarding any references herein to page numbers, line numbers, paragraph numbers, or the like, re JP ‘331.
Note that JP ‘331 teaches:
a machine tool (MC; see paragraphs 0001, 0018, Figure 1) comprising:
a body (including at least the bed 1, the column 2, and/or the enclosure/housing forming the chamber 15; see Figure 1 and at least paragraphs 0018-0019) including a processing area (the chamber 15/area within the chamber 15; see Figure 1 and at least paragraph 0019) for a workpiece (W; see Fig. 1 and paragraphs 0018-0019, for example);
an ejection part (5; Fig. 1, paragraph 0018) configured to eject a coolant into the (aforedescribed) processing area (Fig. 1, paragraph 0018); and
a mist collector (21) configured to suck a substance included in air as a result of the coolant being ejected from the ejection part (5) into the (aforedescribed) processing area (paragraphs 0020, 0031, Figure 1),
wherein the mist collector (21) includes a first filter (36; Fig. 1, paragraph 0021, for example) for removing the substance, and
the machine tool further comprises:
a drain (54; alternatively, 52 and/or 68) configured to discharge the substance that has passed through the first filter (36) to the (aforedescribed) body (Figure 1, paragraphs 0023, 0026-0030); and
a suction mechanism (65) configured to suck the substance that has passed through the first filter (36) from the mist collector (54) into the (aforedescribed) drain (see Figure 1 and at least paragraphs 0026-0031).
Regarding claim 2, the (aforedescribed) body includes a cover body (the enclosure/housing forming the chamber 15) defining the (aforedescribed) processing area (the chamber 15/area within the chamber) (see Figure 1 and paragraph 0019, for example), one end (left re Figure 1) of the drain (68) is coupled to the mist collector (21), and another end (right end re Figure 1) of the drain (68) is coupled to the cover body (of/for 15). See Figure 1 and at least paragraphs 0026 and 0030, as well as the translations of claims 1 and 2, for example.
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 claim 4, no indication regarding the allowability of the subject matter of elected claim 4 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. For example, U.S. Patent Application Publication No. 2024/0246014 to Yamamoto et al. teaches a similarly configured machine tool and mist collector.
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.
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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
July 21, 2026
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