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 .
Specification
The disclosure is no longer objected to in view of the amendments filed 21 July 2026.
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) are “a tool with functions” and “a portion to be gripped by a tool changer” in claims 1, 4, and 5. 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.
Claim limitation “a portion to be gripped by a tool changer” is interpreted in view of the originally filed specification as the “grip 204” which is capable by virtue of its structure of being gripped by a tool changer. See also Applicant’s Fig 3 which shows grip 204 as cylindrical.
Claim Rejections - 35 USC § 112
Claims 1-5 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.
Claims 1, 4, and 5 each recite the limitation “a tool with functions.” There is insufficient antecedent basis for this limitation in the claims as each claim (1, 4, 5) already recites “a machine tool.” By reciting “a tool with functions” it is unclear whether the tool is the same as the previously recited “machine tool” or a new, previously unrecited “tool.”
Claims 1 and 5 recite the claim limitation “tool with functions” which 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 “tool with functions” is described at [0017] but no specific tool and no specific function are recited. Paragraph 0017 recites a list of other tools, but without a clear nexus to the claimed “tool with functions.” 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McMurtry et al. (US 20090080990 A1).
As to claim 1, McMurtry teaches a device for a machine tool (Title: Machine Tool Accessory”), the device being attachable to an attachment portion of the machine tool (as shown for example in Fig 1, the spindle attachment portion 20 attaches to a spindle 12 which is itself attached to the housing 14), the device comprising: a power receiving circuit (lower disk 26 is an “inductive disk” see [0053]) provided at a position facing a power supply circuit (upper disk 24. The disks 26 and 24 face each other) provided on the machine tool (upper disk 24 is located on housing 14 as shown in Fig 1) along a direction intersecting a rotation axis of the device for the machine tool (Examiner’s interpretation of this limitation is that the term “provided” is further limited by “along a direction...” Thus the “power receiving portion” is oriented in a direction which is not parallel to the axis A. As shown in Fig 1, the lower inductive disk 26 is oriented in a direction perpendicular to the axis A.) for receiving power from the power supply circuit in a non-contact manner (this is the purpose of the “inductive link 22”); a communication circuit ([0065] teaches: “It is possible that power only may be supplied to the accessory, signal only (one or two way), or both. If power only is supplied a signal communication may be provided by another means and/or another path e.g. power may be supplied inductively as described whereas signal communication may be provided by a separate radio or optical link to a base station.”) capable of communicating with a device external to the device for the machine tool ([0011]: “Each electrical path may be arranged to carry power or a communication signal of some kind. If power is supplied to a tool accessory mounted to the tool support, the tool accessory may also comprise a wireless communication system for sending data to, and/or receiving data from, a remote interface.”); a tool with functions or an electric tool ([0046]: “The shank supports an accessory 30 shown in chain-dotted outline, which in this instance is a measurement probe 30, but could be any accessory.” The “measurement probe 30” is both an electric tool and a tool with functions) that operates on the power obtained from the power receiving circuit and communicates with the external device via the communication circuit ([0047] “Signal and power paths S and P are provided to the accessory via an inductive link 22.”); and a first portion to be gripped by a tool changer (autochanger slot 28, see Examiner’s Figure 1, below), a second portion (unlabeled; see Examiner’s Fig 1, below), and a third portion (plate 30; See Examiner’s Fig 1, below), wherein the first portion is located between the attachment portion of the machine tool and the second portion along a direction of the rotation axis (as shown below), wherein, in a plane perpendicular to the rotation axis, an area of the second portion is larger than areas of the first portion and the third portion (as illustrated.), and the second portion is spaced apart from the attachment portion of the machine tool (as illustrated).
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As to claim 2, McMurtry teaches the device for the machine tool according to claim 1, wherein, in a state in which the device (shank 18) for a machine tool (machine tool 10) is attached to the attachment portion (shank 18 is shown to be attached to spindle 12 in Fig 1): part of the attachment portion is parallel to the device for the machine tool along a direction of the rotation axis (as shown in Fig 1, both spindle 12 and shank 18 are parallel to rotation axis A), and the power supply circuit (upper inductive disk 24) is located at the part of the attachment portion parallel to the device for the machine tool (the upper inductive disk 24 has a height which is parallel to rotation axis A and therefore parallel to both the shank 18 and spindle 12).
As to claim 3, McMurtry teaches the device for the machine tool according to claim 1, wherein the attachment portion is a tool spindle (spindle 12) to which a tool is attachable ([0046]: “The shank supports an accessory 30 shown in chain-dotted outline, which in this instance is a measurement probe 30, but could be any accessory.”).
As to claim 5, McMurtry teaches a machine tool (machine tool 10) comprising: an attachment portion (spindle 12) being attachable to a first device (shank 18) having (i) a power receiving circuit (inductive disk 26) provided at a position facing a power supply circuit (inductive disk 24) provided on the machine tool (the disk 24 is on the housing 14) along a direction intersecting a rotation axis of the device for the machine tool (Examiner’s interpretation of this limitation is that the term “provided” is further limited by “along a direction...” Thus the “power receiving portion” is oriented in a direction which is not parallel to the axis of rotation A. As shown in Fig 1, the lower inductive disk 26 is oriented in a direction perpendicular to the axis A.) for receiving power from the power supply circuit in a non-contact manner (the purpose of inductive links is to transmit power or signal in a non-contact manner) and (ii) a communication circuit ([0065] teaches: “It is possible that power only may be supplied to the accessory, signal only (one or two way), or both. If power only is supplied a signal communication may be provided by another means and/or another path e.g. power may be supplied inductively as described whereas signal communication may be provided by a separate radio or optical link to a base station.”) capable of communicating with a second device external to the first device for the machine tool ([0011]: “Each electrical path may be arranged to carry power or a communication signal of some kind. If power is supplied to a tool accessory mounted to the tool support, the tool accessory may also comprise a wireless communication system for sending data to, and/or receiving data from, a remote interface.”) and (iii) a tool with functions or an electric tool ([0046]: “The shank supports an accessory 30 shown in chain-dotted outline, which in this instance is a measurement probe 30, but could be any accessory.” The “measurement probe 30” is both an electric tool and a tool with functions) that operates on the power obtained from the power receiving circuit and communicates with the second device via the communication portion ([0047] “Signal and power paths S and P are provided to the accessory via an inductive link 22.”); and (iv) a first portion to be gripped by a tool changer (autochanger slot 28, see Examiner’s Figure 1, above), a second portion (unlabeled; see examiner’s Fig 1 above), and a third portion (plate 30, see Examiner’s Fig 1 above), wherein the first portion is located between the attachment portion of the machine tool and the second portion along a direction of the rotation axis (as illustrated), wherein, in a plane perpendicular to the rotation axis, an area of the second portion is larger than areas of the first portion and the third portion (as illustrated), and the second portion is spaced apart from the attachment portion of the machine tool (as illustrated); and a servomotor moving the attachment circuit (Examiner’s best interpretation of “moving portion” is a motor which spins the spindle. McMurtry teaches the spindle is driven by a motor, see [0045].).
Claim Rejections - 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, 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over McMurtry et al. (US 20090080990 A1) in view of McMurtry et al. (US 20080105094 A1).
As to claim 4, McMurtry’990 teaches a device for a machine tool (Title: Machine Tool Accessory”), the device (shank 18) being attachable to an attachment portion (spindle 12) of the machine tool (machine tool 10), the device comprising: a power receiving circuit (inductive disk 26) provided at a position facing a power supply circuit (inductive disk 24) provided on the machine tool (the disk 24 is on the housing 14) along a direction intersecting a rotation axis of the device for the machine tool (Examiner’s interpretation of this limitation is that the term “provided” is further limited by “along a direction...” Thus the “power receiving portion” is oriented in a direction which is not parallel to the axis of rotation A. As shown in Fig 1, the lower inductive disk 26 is oriented in a direction perpendicular to the axis A.) for receiving power from the power supply circuit in a non-contact manner (the purpose of inductive links is to transmit power or signal in a non-contact manner); a communication circuit ([0065] teaches: “It is possible that power only may be supplied to the accessory, signal only (one or two way), or both. If power only is supplied a signal communication may be provided by another means and/or another path e.g. power may be supplied inductively as described whereas signal communication may be provided by a separate radio or optical link to a base station.”) capable of communicating with a device external to the device for the machine tool ([0011]: “Each electrical path may be arranged to carry power or a communication signal of some kind. If power is supplied to a tool accessory mounted to the tool support, the tool accessory may also comprise a wireless communication system for sending data to, and/or receiving data from, a remote interface.”); and a first portion to be gripped by a tool changer (autochanger slot 28, see Examiner’s Figure 1, below), a second portion (unlabeled; see Examiner’s Fig 1, above), and a third portion (plate 30; See Examiner’s Fig 1, above), wherein the first portion is located between the attachment portion of the machine tool and the second portion along a direction of the rotation axis (as shown above), wherein, in a plane perpendicular to the rotation axis, an area of the second portion is larger than areas of the first portion and the third portion (as illustrated.), and the second portion is spaced apart from the attachment portion of the machine tool (as illustrated).
McMurtry’990 does not teach a tool with functions or an electric tool including at least one of a temperature sensor, an oscillator, an actuator and a motor that operates on the power obtained from the power receiving circuit and communicates with the external device via the communication circuit.
Rather, McMurtry’990 teaches a shank 18 including an accessory 30 which is described at [0046]: “which in this instance is a measurement probe 30, but could be any accessory.”
However, devices having electric tools including at least one from the claimed Markush grouping were known in the art at the time the invention was effectively filed. See McMurtry’094 which teaches a similar device 40 having sensors 42, 44. McMurtry’094 teaches at [0048]: “In this embodiment a second part of the cutting implement or cutting surface 48 has sensors 42 and 44 shown in partial cut away section 41. Sensor 42 is an accelerometer for measuring vibration and sensors 44 are temperature sensors for measuring the temperature close to the teeth 45 of the cutting implement. The sensors are connected via intermediate circuitry 46 to contacts 32.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided at least the temperature sensor of McMurtry’094 on the shank 18 of McMurtry’990. Such a person would have been motivated to do so in order to measure the temperature of the workpiece. See also MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Response to Arguments
Applicant's arguments filed 21 July 2026 have been fully considered but they are not persuasive.
Applicant argues on pages 9-11 that McMurtry ‘990 does not teach the structure of: a first portion to be gripped by a tool changer, a second portion, and a third portion, wherein the first portion is located between the attachment portion of the machine tool and the second portion along a direction of the rotation axis, wherein, in a plane perpendicular to the rotation axis, an area of the second portion is larger than areas of the first portion and the third portion, and the second portion is spaced apart from the attachment portion of the machine tool.
Applicant argues the claimed limitations provide for the following mapping of the invention:
Attachment portion: spindle
First portion: grip 204
Second portion: implied to be somewhere near bearings 504
Third portion: implied to be the function portion 400.
Applicant argues that McMurtry ‘990’s coupling is located between the grip feature and the spindle. It appears that Applicant believes McMurtry should be mapped as follows:
Attachment portion: McMurtry’s spindle 12;
First portion: McMurtry’s feature 28
Second portion: implied to be McMurtry’s inductive link 22
Third portion: implied to be McMurtry’s probe 30
However, there is nothing in the claim that requires McMurtry’s inductive link 22 to be interpreted as the second portion.
To see Examiner’s mapping of the limitations to McMurtry, see Examiner’s Figure above, in the rejection of claim 1.
Examiner’s mapping of the second portion meets all of the claimed requirements including
wherein the first portion is located between the attachment portion of the machine tool and the second portion along a direction of the rotation axis
(as shown, the first portion is between the attachment and second portions)
in a plane perpendicular to the rotation axis, an area of the second portion is larger than areas of the first portion and the third portion
(the diameter of the second portion is larger than either of the first or third portions)
the second portion is spaced apart from the attachment portion of the machine tool
(the second portion is not adjacent to the attachment portion).
McMurtry ‘094 is not relied upon to teach the newly claimed limitations.
Conclusion
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 JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 2 September 2026
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