Detailed Action Election/Restriction Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim. Applicant's election without traverse of Group I, claims 1-6, in the reply filed on March 5, 2026 is acknowledged. America Invents Act Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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. 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 is: transfer device in claim 1. Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Thus, transfer device is interpreted as comprising an articulated robot ic arm configured to move along rails, a two- or three-axis drive orthogonal robot , or a self-propelled robot. If applicant does not intend to have this/ limitation 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 Objections Claim 4 is objected to because of an informality : for clarity, the phrase “ if a tool holder to be removed includes a tool holder holding an unusable tool and a tool holder holding a usable tool ” should be changed to: “ if tool holders to be removed include a tool holder holding an unusable tool and a tool holder holding a usable tool ”. Appropriate correction is required. Rejections under 35 USC 103 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 of this title, 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 set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 . Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP-6775704-B1 (“ Hiroshi ”) in view of US Patent No. 5,885,200 (“Sugihara”) . Regarding c laim 1 , Hiroshi teaches a tool transfer system (¶ [0001] & [0018], wherein all references to the Hiroshi specification refer to the machine translation submitted with the IDS filed on August 7, 2024) comprising: a machine tool (400) (fig. 1, ¶ [0018]) ; a tool storage section (250) in which a plurality of tool holders are able to be stored, each of the tool holders being capable of holding a tool (fig. 1, ¶ [0018] & [0020] ). One of skill in the art would interpret T1 /T2 illustrated in figs. 6 & 8-9 of Hiroshi as including a tool holder , specifically the blown-up image in fig. 8 which shows a holder being slid off a tool. The examiner also notes that the tool/tool holder illustrated in these figures of Hiroshi has the exact same structure as the tool holder illustrated in Applicant’s originally filed drawings (specifically figures 10-12 of Applicant’s originally filed disclosure). However, the tool holder is not a positively recited claim element, thus Hiroshi does not have to teach a tool holder—the system merely has to be capable of being used with the claimed tool holders, which it is as illustrated in figs. 6 & 8-9 of Hiroshi. Hiroshi further teaches a workstation (200) for a worker to perform work for the tool holders ( fig. 1, ¶ [0019] & [0023] ) ; a transfer device (300) for transferring a designated tool holder among a tool holder in the machine tool, a tool holder in the tool storage section, and a tool holder in the workstation, to a designated transfer destination, which is one of the machine tool, the tool storage section, and the workstation (fig. 1, ¶ [0021] & [0023]-[0024]) ; and a controller for controlling the tool transfer system (¶ [0027] ) . Hiroshi fails to explicitly teach the controller executes: processing for determining whether or not a tool holder to be removed from the machine tool includes a tool holder holding an unusable tool; and processing for controlling the transfer device so as to transfer the tool holder to be removed, from the machine tool to the workstation if the tool holder to be removed includes a tool holder holding an unusable tool . However, this would have been obvious in view of Sugihara. Sugihara is also directed to a tool change system (col. 1 lines 5-9, col. 2 lines 17-31). The machine tool of Sugihara has a tool magazine 29 and a tool change device 27 for transferring tools in the magazine into a working position (fig. 1, col. 8 lines 37-67). Sugihara teaches the tools 25 being moved around in the system while within pot/holder 31 (figs. 1 , 5 & 8 , col. 7 lines 47-49, col. 9 lines 15-36, cols. 9-10 lines 52-8, col. 10-11 lines 34-25, cols. 11-12 lines 65-12 & cols. 13-14 lines 42-19 ). The system comprises sensors to detect if a tool is unusable (col. 12 lines 34-43 & col. 14 lines 30-39). If a tool is unusable, the tool change system removes and replaces the tool, while moving the unusable tool to a storage location 58 where an operator can remove the unusable tool to repair or replace it (figs. 1 & 14, cols. 14-15 lines 28-31). In this case, each of Hiroshi and Sugihara teach a tool transfer system that comprises a machine tool with a magazine, and a storage location, wherein the system can transfer tools between the machine tool magazine and the storage position comprising another magazine where an operator can remove or add tools. Sugihara teaches that it is known to determine if specific tools are unusable due to damage or exceeding a time limit of use, and to automatically remove said tool from the machine tool and transfer them to the storage magazine for an operator to remove or repair them. Thus, in order to improve machine accuracy, it would be obvious to automatically determine if a tool within the machine tool 400 of Hiroshi is unusable, and if so, to use the transport device to automatically remove the tool/tool holder from the machine tool and transfer it to the workstation 200 magazine for a worker to remove it. There would be a reasonable expectation of success of applying this method to the system of Hiroshi since the workstation 200 of Hiroshi has multiple magazines where one magazine M2 is specifically for allowing an operator to remove those tool s from the system (see ¶ [0052]-[0055] of Hiroshi). Further, assuming arguendo that one of skill in the art would not believe the tool of Hiroshi is in a tool holder, Sugihara teaches that it is known to automatically transport tools within a system and between magazines while the tool is in a pot/holder. Having the tools in a holder can allow the system to more reliably transfer, hold and store tools even if they are damaged, broken, worn, or to hold tools of different types and/or dimensions. Thus, in order to allow the system to more reliably transfer t ools of different shapes and sizes, or to hold damaged tools, it would be obvious to modify the system of Hiroshi so that the tools are transported throughout the system and between magazines while in the pot/holder P1/P2 . Claim 2 recites the controller further executes processing for controlling the transfer device so as to transfer the tool holder to be removed, from the machine tool to the tool storage section if the tool holder to be removed does not include a tool holder holding an unusable tool . Hiroshi teaches transferring usable tools and tool holders between the machine tool and the tool storage section (¶ [0021]), thus, it would be obvious to transfer usable tools between the machine tool and the storage section since usable tools do not need to be removed or repaired by an operator, and the tool storage section is configured for storing usable tools that can later be transferred to the machine tool. Claim 3 recites the controller further executes processing for determining the tool holder to be removed out of a plurality of tool holders that are held by the machine tool, and in the determining processing, a tool holder holding an unusable tool is preferentially determined as the tool holder to be removed over a tool holder holding a usable tool . This is taught as detailed in the rejection to claim 1, above. Specifically, Hiroshi teaches a plurality of tools and tool holders being stored in the magazine of the machine tool. After determining one of the tools is unusable, that tool is automatically removed by the transfer device, i.e. the tool holder having the unusable tool is preferentially determined as the tool holder to be removed over the other tool holders in the machine tool. Claim 4 recites if a tool holder to be removed includes a tool holder holding an unusable tool and a tool holder holding a usable tool, the controller further executes processing for controlling the transfer device so as to transfer the tool holder holding the unusable tool to the workstation and thereafter transferring the tool holder holding the usable tool to the tool storage section . This is obvious as detailed in the rejections to claims 1 and 2, above. Specifically, claim 1 details that it is obvious to control the transfer device to transfer an unusable tool and its tool holder to the workstation so that it can be removed or repaired by an operator. As detailed in the rejection to claim 2, it is further obvious in view of the teachings of Hiroshi to transfer a usable tool to the tool storage section since usable tools do not need to be removed or repaired by an operator, and the tool storage section is configured for storing usable tools that can later be transferred to the machine tool. While Hiroshi et al. fail to explicitly teach transferring the unusable tool first, if an unusable tool and a usable tool are both to be transferred, MPEP 2144.04(IV)(C) states that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results . In this case, if two different tools are to be transferred from the machine tool, transferring either of the tools first would be prima facie obvious as the end result will still be the expected result of each of the tools being transferred to their predetermined destination. Regarding c laim 5 , Hiroshi further teaches a plurality of tool holders are able to be stored in the workstation (figs. 3-4, ¶ [0044] ) . Claim 5 also recites the number of tool holders able to be stored in the workstation is smaller than the number of tool holders able to be stored in the tool storage section . Given the much larger size of the tool storage section 250 with respect to the workstation 200, one of skill in the art will reasonably infer that the tool storage section 250 can hold more tool holders than the workstation 200 (see figs. 1 & 6 of Hiroshi ). Assuming arguendo that one of skill in the art would not infer that the tool storage section can hold more tool holders than the workstation, merely increasing the size of the tool storage section relative to the workstation does not patentably distinguish the claim over the prior art as a larger storage section would not perform differently than the storage section of Hiroshi , and, it will produce the expected result of being capable of storing more tool holders (see MPEP 2144.04(IV)(A)). Double Patenting 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 . Claim s 1 and 3-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/037,274 (“the ‘274 application”). Since claim 1 of the ‘274 application teaches transferring tool holders to the workstation or storage unit, it would be obvious to transfer the unusable tools to the workstation. Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of the ‘274 application. Claim 1 of the ‘274 application (from which claim 3 depends) teaches transferring tool holders to the workstation or tool storage unit, wherein unusable tool are prioritized. Claim 3 teaches that, after unusable tools have been transferred, that vacant tool holders and tool holders having usable tools can be transferred. Thus, since claim 1 teaches transferring tool holders to the workstation or storage unit, it would be obvious to transfer the vacant tool holders or tool holders with usable tools to the tool storage unit. Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘274 application. While claim 1 of the ‘274 application does not teach the limitation of claim 5, merely increasing the size of the tool storage section relative to the workstation does not patentably distinguish the claim over the ‘274 application as a larger storage section would not perform differently than the storage section of claim 1 of the ’274 application, and, it will produce the expected result of being capable of storing more tool holders (see MPEP 2144.04(IV)(A)). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Allowable Subject Matter Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims . Due to the carrying in process described by Hiroshi (see ¶ [0054] of Hiroshi), and the workstation having two magazines—one preferably for carrying in tools and one preferably for tools to be carried out (see ¶ [0053] of Hiroshi), it would not be obvious without hindsight to modify the system of Hiroshi to perform the conditional limitation of claim 6. The examiner notes that while claim 6 is a contingent limitation, the system still needs to have the structure to perform the limitation should the condition occur. See MPEP 2111.04(II). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). /KYLE A COOK/ Primary Examiner, Art Unit 3726