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 of Claims 1-10 in the reply filed on 8/27/26 is acknowledged.
Claim 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Claim Interpretation
Claim 1 recites “the workpiece being to be machined by a tool” and then requires “the first support provided between the tool and the second support . . . .” Due to the positive recitation of a feature being between the tool and the second support, the claim is interpreted as a combination that includes the tool.
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/are: guide bushing unit in claims 1 and 18, respectively; pressing member in claim 9; and shaft support member in claim 14.
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 1-10 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 1, lines 3-4 recite “the workpiece being to be machined by a tool”. What are the mets and bounds of the limitation “being to be”? As written, it is unclear.
Claim 1, lines 9-11 recite “the guide bushing unit being configured to support the workpiece when the guide bushing unit is in the through hole”. The term “when” makes it appear as though there may be a situation where the guide bushing unit may not be in the through hole, thus making the claim limitation unclear.
Claim 7, lines 2-3 recite “the ejection opening is closed by the guide bushing unit when the guide bushing unit is in the through hole”. The term “when” makes it appear as though there may be a situation where the guide bushing unit may not be in the through hole, thus making the claim limitation unclear.
Claim 10, line 3 recites “a second drive”. Since a first drive was never recited, it is unclear is a first drive is required or not.
Claim 10, lines 12-13 recite “the guide bushing unit being configured to support the workpiece when the guide bushing unit is in the through hole”. The term “when” makes it appear as though there may be a situation where the guide bushing unit may not be in the through hole, thus making the claim limitation unclear.
Allowable Subject Matter
Claims 1-10 are allowed.
Please note: the above 112 issues have to be clarified before an issue is granted.
The closest prior art of record is Asahara et al. (US Pub. No. 2007/0227317).
Regarding claims 1 and 10, Asahara discloses a machine tool comprising a tool holder (5) configured to hold a tool (T) configured to machine a workpiece, a workpiece support (1), and a second drive configured to move the tool holder (figures 2-6 and paragraphs 67-68), the workpiece support including rotating shaft (3) having a first axis and a leading end portion, the rotating shaft being configured to support a workpiece (W) at the leading end portion, the workpiece being to be machined by the tool (T) (figures 1a and 6); a second support (6) supporting the rotating shaft rotatably about the first axis and configured to move the rotating shaft along the first axis; a first support (51) provided between the tool and the second support along the first axis and including a through hole into which a guide bushing unit (4) is configured to be inserted and into which the leading end portion of the rotating shaft is configured to be inserted (via cylindrical attachment (41) (figure 1 and paragraphs 49-50), the guide bushing unit (4) being configured to support the workpiece when the guide bushing unit is in the through hole.
Asahara fails to disclose having an ejection opening being provided on an inner circumferential surface of the through hole of the first support; and an air supplier configured to supply air to the first support via the ejection opening, as claimed in independent claims 1 and 10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ADDISU at (571) 272-6082. The examiner can normally be reached on Monday - Friday 9:00 am - 5:00 pm (Mondays and Wednesday-Friday).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh can be reached on (571) 272-3460. 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://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SARA ADDISU/Primary Examiner, Art Unit 3722 9/19/26
Prosecution Insights