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 .
Status of Claims
This Office Action is responsive to communication filed on 06/08/2026.
Claims 1-7 are amended.
Claims 1-7 are pending and presented for examination.
Response to Arguments/Remarks
Regarding Priority Issues
Applicant Argues
The previous office action incorrectly indicated that the application claims foreign priority under 35 U.S.C. §119.
Examiner Responds
Acknowledged. The examiner apologizes for any confusion.
Regarding Objections to Drawings and Specification/Title
Applicant Argues
Drawings and title have been amended to overcome objections set forth in previous office action.
Examiner Responds
The objections to the drawings and title set forth in the previous office action are withdrawn.
However, during examination of the amended claims, new objections to the specification have been identified and are addressed below.
Regarding Interpretation and Rejections under 35 U.S.C. §112
Applicant Argues
Claims have been amended such that the interpretation under §112(f) should be avoided and the associated rejections under §112(a) and §112(b) should be withdrawn.
Regarding the rejection under §112(b) set forth on page 9 of the previous office action, claim 1 has been amended to further recite the associated recited register features.
Examiner Responds
The amendments to the claims avoid an interpretation under §112(f) and the associated rejections under §112(a) and §112(b) set forth in the previous office action are withdrawn.
Regarding the remaining rejection under §112(b), the examiner notes that the amendment to the claim reflects a genuine attempt by the Applicant to address the clarify issues identified in the previous office action. However, the amended language introduces additional ambiguity and fails to overcome the rejection under §112(b) in its entirety, for the reasons discussed below.
Regarding Rejections under 35 U.S.C. §102
Applicant Argues
Amended claim 1 is not anticipated by Jones.
Examiner Responds
Applicant’s arguments are over amended features and have been fully considered but are moot, as claim 1 is not rejected as being anticipated by Jones in this office action.
Specification
The disclosure is objected to because of the following informalities:
[0046] and Fig. 1 the storage unit is designated with reference character 14, however in [0049] the storage unit is designated with reference character 34.1
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-7 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
Claim 1 recites “a type of shape to be provided with setting data set for each item among parts to be machined by the custom G-code …”, however the phrase “among parts to be machined by the custom G-Code” was not found to appear in the specification and no corresponding structure or steps could be identified that describes parts being machined by a G-code.2
Dependent claims are likewise rejected.
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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1
The claim recites several terms and phrases which render the metes and bounds of the claim unclear and ambiguous, such that a person of ordinary skill in the art would not be able to determine the scope of the claim with reasonable certainty. The examiner has reviewed the specification in an attempt to resolve the ambiguities noted below in an effort to determine the scope of the claimed invention. However, the specification does not provide sufficient clarification to determine the scope of the claim invention.3 Specific issues underlying this determination are:
the claim recites “a type of shape to be provided with setting data set for each item”, however this is unclear; does “for each item” modify setting data or a type of shape (e.g., “a type of shape […] for each item” or “setting data for each item” or “for each item among parts to be machined”);
the claim recites “a type of shape to be provided with setting data” which implies that setting data is provided with a type of shape, however claim later recites “calculate setting data, based on […] the shape selected”; thus, the relationship between the shape and the setting data is unclear (e.g., does the shape provide, receive, or define setting data?);
the claim recites “among parts to be machined by the custom G-code”, however parts are machined by the numerical control device and not by the G-code;
“for each item among parts to be machined by the custom G-code” introduces ambiguity to “at least one item set in the custom G-code”; amending the claim to recite “at least one item that is set in the …” or “at least one set of items in the …” will resolve this ambiguity;
the claim recites “a type of extracted data extracted from the shape”, however “a shape” has not been introduces in the claims and thus “the shape” lacks antecedent basis;
the claim recites registering association information corresponding to “a type of shape” and that the association information is stored in the memory, and separately recites to “receive a shape” and to “query the memory using the shape selected”, however this is unclear; the claim does not establish a relationship between “a type of shape” and “a shape selected” by a user which is then used to query the memory;
the claim recites to register associated information corresponding to “a type of extracted data”, which introduces “a type of extracted data” and later to query the memory by using “a type of extracted data” however this is unclear as it again introduces “a type of extracted data”, is the “type of extracted data” in the registration limitation the same as, or different from, the “type of extracted data” in the query limitation.
The claim has been rejected under 35 U.S.C. 112(b) for the above reasons. Please note that while the examiner has made a genuine attempt to do so, that the examiner may not have pointed out each and every example of indefiniteness. The Applicant is required to review the claim language to make sure the claimed invention is clear and definite.
Dependent claims are likewise rejected.
“All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible. […] Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” MPEP 2173.06(II).
In view of clarity and indefiniteness issues outlined above regarding claim 1, the examiner is unable to construe the claims such that there is not a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claim, and the claim will not be rejected on the basis of prior art. In lieu of a prior art rejection, the closest prior art found by the examiner while attempting to determine the scope of the claimed invention is made of record below and is considered pertinent to Applicant’s disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kamiya (US20070027571A1) discloses an automatic programming method for a numerical control device wherein a product shape, a workpiece shape, and other data such as material type and dimensions are registered in a database such that an operator can interact with the device to create machine code for machining the product ([0010]-[0011], [0070], [0074]).
Kim (US20130311950A1) discloses providing a variable list shape elements, including dimensions, coordinates and start points, of a user selected shape, and generating a macro NC code that defines the shape by setting parameters ([0039]-[0040]).
Nguyen, T. K., et al., (“Novel Integration of CAPP in a G-Code Generation Module Using Macro Programming for CNC Application”, published on 10/12/2020, retrieved on 8/17/2026, retrieved from https://www.mdpi.com/2075-1702/8/4/61) teaches receiving a 3D solid model of a part, extracting geometry data, determining relationships among design features, machining feature recognition, and associated G-code generation (see section 2. Procedure and Implementation Approach (pg. 3) and Figure 1 (pg. 4)).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael V Farina whose telephone number is (571)272-4982. The examiner can normally be reached Mon-Thu 8:00-6:00 EST.
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, Kamini Shah can be reached at (571) 272-2279. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.V.F./Examiner, Art Unit 2115
/KAMINI S SHAH/Supervisory Patent Examiner, Art Unit 2115
1 The examiner is referencing the published version of Applicant’s specification in keeping with the Applicant’s remarks, which also reference the published version of the specification, to mitigate any confusion and/or miscommunication between Applicant and examiner. Any further references to paragraphs herein will be referring to the published version of Applicant’s specification.
2 Applicant’s specification does provide written description support for a workpiece to be machined by a machine tool such as a numerical control device in [0043] and [0050].
3 The examiner notes that specification appears to be a translation of a foreign-language application and that some of the ambiguities may, in part, be attributable to translation. The examiner is providing this observation solely for Applicant’s consideration and does not form the basis of, nor limit, the rejection set forth herein, as the rejection rests solely on the claim language as presented.
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