DETAILED 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:
Claim No.
Limitation(s)
1 - 7
a chip shredding determination unit (see paragraph 0049 and fig. 1)
1 - 7
an output unit (structure not disclosed)
2 - 7
an oscillation axis selection unit (see paragraph 0049 and fig. 1)
5 – 7
oscillation control unit (see paragraph 0049 and fig. 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 – 7 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 pre-AIA the applicant regards as the invention.
Claim limitation “output unit” 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 disclosure is devoid of any structure that performs the function in the claim (see descriptions of output unit in paragraphs 0010 and 0104). 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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8 and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 8 and 9 directed to an abstract idea.
Regarding claim 8:
Per step 1 of the Subject Matter Eligibility Test for Products and Processes, “Is the claim to a process, machine, manufacture, or composition of matter?”, claim 8 is directed to an object of manufacture.
Step 1: yes.
Per step 2A prong 1, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?”, claim 8 recites the following limitations directed to an abstract idea: a chip shredding determination step of determining, based on tool data from which a tool shape is recognizable or relative positional relationship data on a workpiece and a tool and movement data on relative movement of the workpiece and the tool, whether or not a chip is shreddable by oscillation cutting by oscillation along only a specific axis of a plurality of feed axes; (i.e. mental process, e.g. evaluation).
Step 2A: prong 1: yes.
Per step 2A prong 2, “Does the claim recite additional elements that integrate the judicial exception into a practical application?”, the following elements of claim 8 are directed to additional elements: an output step of outputting a determination result of the chip shredding determination step (mere data output, cf. MPEP 2106.05(g)).
Step 2A prong 2: no.
Per step 2B, “Does the claim recite additional elements that amount to significantly more than the judicial exception?”, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claimed inventions simply append well-understood, routine and conventional activities previously known to the industry (see analysis under prong 2), both when viewed independently and as an ordered combination, specified at a high level of generality, to the judicial exception, (e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry).
Step 2B: no.
Regarding claim 9:
In addition to the elements of parent claim 8, claim 9 adds the following limitations:
Per step 2A prong 1, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?”, claim 9 recites the following limitation directed to an abstract idea: wherein the computer further executes an oscillation axis selection step of selecting, based on the determination result of the chip shredding determination step, the specific axis as an oscillation axis (i.e. mental process, e.g. evaluation).
Step 2A: prong 1: yes.
Per step 2A prong 2, “Does the claim recite additional elements that integrate the judicial exception into a practical application?”, the following elements of claim 9 are directed to additional elements: and in the output step, a selection result of the oscillation axis selection step is output (mere data output, cf. MPEP 2106.05(g)).
Step 2A prong 2: no.
Per step 2B, “Does the claim recite additional elements that amount to significantly more than the judicial exception?”, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claimed inventions simply append well-understood, routine and conventional activities previously known to the industry (see analysis under prong 2), both when viewed independently and as an ordered combination, specified at a high level of generality, to the judicial exception, (e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry).
Step 2B: no.
Allowable Subject Matter
Claims 1 - 9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. § 101 and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, as applicable, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
The prior art of record Yamamoto et al., U.S. Patent No. 11,014,210 (“Yamamoto”) teaches a controller for a machine tool that oscillates the workpiece relatively by a coordinated operation of the spindle and the feed axes so as to shred a chip generated by the machining (cf. e.g. col. 1:59ff., i.e. “a chip shredding determination unit that determines, [an] oscillation cutting by oscillation along only a specific axis of a plurality of feed axes; and an output unit that outputs a determination result …”).
However, the prior art of record, taken either alone or in combination, fails to teach or fairly suggest “determines, based on tool data from which a tool shape is recognizable or relative positional relationship data on a workpiece and a tool and movement data on relative movement of the workpiece and the tool, whether or not a chip is shreddable by oscillation cutting by oscillation along only a specific axis of a plurality of feed axes;”, as recited in claim 1, in combination with the remaining features and elements of the claimed invention.
The Examiner notes that, in light of the Specification, “chip” is interpreted as swarf as a term of art (cf. Goh, et al., Pre-Grant Publication No. US 2019/0365502 paragraph 0022, “Chip breakers are used on cutting tools to ensure that material removed from the workpiece is removed as small pieces, rather than as one continuous piece (called a “chip”); this chip is often seen when milling PMMA material in the absence of chip breakers.”, also Instant Specification paragraph 0003 “When a workpiece is machined with a cutting tool of a machine tool, if chips are continuously generated, the chips may become entangled in the cutting tool”).
The closest prior art, Yamamoto, does not teach determining whether or not a chip is shreddable by oscillation, as claimed, “based on tool data from which a tool shape is recognizable or relative positional relationship data on a workpiece and a tool and movement data on relative movement of the workpiece and the tool”. Instead, Yamamoto generates oscillation commands “based on the rotation speed and the feedrate described above, an oscillation command for the feed axis M1 such that an oscillation frequency is a positive non-integral multiple of the rotation speed described above and that the tool 11 performs intermittent cutting on the workpiece W.” (col. 5:48ff.). Yamamoto does not teach or suggest either performing a determination as to whether or not a chip is shreddable let alone based on tool data from which a tool shape is recognizable or relative positional relationship data on a workpiece and a tool and movement data on relative movement of the workpiece and the tool as claimed.
Independent claims 5 and 8 are allowable over the art for the reasons cited for claim 1. The remaining claims are allowable because they depend on one of allowable independent claims 1, 5, or 8.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J. HUNTLEY whose telephone number is (303) 297-4307 and email address is michael.huntley@uspto.gov. The examiner can normally be reached on Monday – Friday, 8:00 am – 5:00 pm MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s director, David Wiley, can be reached at (571) 272-4150. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/MICHAEL J HUNTLEY/
Supervisory Patent Examiner, Art Unit 2129