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 .
Specification
The abstract of the disclosure is objected to because the legal phraseology such as “means” or “comprises” or “comprising” or “said” often used in patent claims should be avoided in the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Regarding claims 1-4, the claim limitation “a discharge state value acquisition unit configured to acquire,…” has been interpreted under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “configured to acquire…” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier; the term “discharge state value acquisition” does not provide further clarity as to the structure. Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-4 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appear to be the corresponding structures described in the specification for the 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph limitation: [para. 0018, lines 1-8, Detailed Description, cited:[ "The average inter-electrode voltage calculation unit 32 calculates a time average of the inter-electrode voltage detected by the inter-electrode voltage detection unit 22…The average inter-electrode voltage calculation unit corresponds to the discharge state value acquisition unit…].
Regarding claims 1-4, the claim limitation “a discharge state value compensation unit configured to compensate the discharge state value…” has been interpreted under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “configured to compensate the discharge state value…” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier; the term “discharge state value compensation” does not provide further clarity as to the structure. Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-4 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appear to be the corresponding structures described in the specification for the 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph limitation: [para. 0058, lines 8-10, Detailed Description, cited: [”34: compensation unit (discharge state value compensation unit”], and [para. 0018, lines 8-10, Detailed Description, cited:[ "The compensation unit 34 compensates the average inter-electrode voltage in accordance with the relative speed of the wire electrode 12 with respect to the workpiece 14…].
Regarding claims 1-4, the claim limitation “a driving unit configured to cause the wire electrode to move relatively with respect to the workpiece…” has been interpreted under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “configured to cause the wire electrode to move relatively with respect to the workpiece…” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier; the term “driving” does not provide further clarity as to the structure. Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-4 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appear to be the corresponding structures described in the specification for the 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph limitation: para. 0058, lines 5-6, Detailed Description, cited:[ "24: X-axis motor (driving unit) and 26: Y-axis motor (driving unit)…].
Regarding claims 1-4, the claim limitation “a control unit configured to control the driving unit…” has been interpreted under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “configured to control the driving unit…” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier; the term “control” does not provide further clarity as to the structure. Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-4 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appear to be the corresponding structures described in the specification for the 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph limitation: [para. 0058, line 10, Detailed Description, cited:[ "motor control unit (control unit)…] and [para. 0018, lines 17-29, Detailed Description, cited:[ "motor control unit (36) controls the X-axis motor 24 and the Y-axis motor 26, and thereby sets the machining speed to a target machining speed…]
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 4-5 and 8 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 4-5 and 8 of copending Application No. US 2024/0269757 (18/570,272). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-3 and 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 and 6-7 of copending Application No. US 2024/0269757 (18/570,272). The present application discloses substantially all features of the claimed limitation including “the discharge state value compensation unit determines the compensated value based on the equation Sc = S/(1 + α . V) where the compensated value is Sc, the discharge state value is S, the coefficient is a, and the machining speed is V”, but does not disclose “the discharge state value compensation unit determines the compensated value based on the equation Sc =S/α (1+V) where the compensated value is Sc, the discharge state value is S, the coefficient is a, and the machining speed is V”. It would have been obvious to one ordinary skill in the art before the effective filing date of the invention was made to have the equation Sc =S/α (1+V) substitutes for the equation Sc = S/(1 + α . V)in order to suit for user specific application.
This is a provisional nonstatutory double patenting rejection.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: JP6266192 discloses wire electric discharge machine and wire electric discharge machining method.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUANG T VAN whose telephone number is (571)272-4789. The examiner can normally be reached Mon-Fri 9:00-6:00.
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/QUANG T VAN/Primary Examiner, Art Unit 3761 June 10, 2026
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