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
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/01/2026.
Applicant's election with traverse of claims 1-11 in the reply filed on 06/01/2026 is acknowledged. The traversal is on the ground(s) that the groups are sufficiently related that a thorough search for the subject matter of any one group would necessarily encompass a search for the subject matter of the remaining group. This is not found persuasive. While Examiner disagrees with Applicant’s argument that there would not be a serious search burden if all invention groups were examined, the restriction was made on the basis of unity of invention (371 application). Because the invention groups lack unity of invention relative to the shared technical features of claims 1 and 12, as indicated on the restriction requirement filed on 04/21/2026, the restriction requirement is deemed proper. The application contains inventions or groups which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The requirement is still deemed proper and is therefore made FINAL.
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) is/are: “lifting device” in claim 6.
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 1-11 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 recites:
“the process” in line 1, which has insufficient antecedent basis, since no process has been previously introduced in the claim. Further clarification is needed.
“two longitudinal frame modules” and “two cross frame modules”, in line 2, which render the claim indefinite and the metes and bounds of what exactly constitutes the “modules” is unclear. Further clarification is needed.
“formed from metallic profiles” in line 6, render the claim indefinite as it is unclear what constitutes a “metallic profile” and how exactly the flanges are “formed” from metallic profiles. Further clarification is needed.
“the movable mounting” in line 8 has insufficient antecedent basis, since no “movable mounting” has been previously introduced in the claim. Further clarification is needed.
“at least one upper flange” in lines 8-9. Since in line 5-6 of claim 1, there is already “an upper flange” being set forth, it is unclear what is the difference, if any between the “upper flange” of lines 5-6 and the “at least one upper flange” of lines 8-9. Are these the same? Different? Further clarification is needed.
“the posts are welded to the respective upper flange and the lower flange” in line 10. However, the term “the respective” renders the claim unclear as it is unclear in relation to what “the respective” upper and lower flanges are taken from. Additionally, it is unclear to which “respective upper flange” it is referring to, since lines 5-6 set forth “an upper flange” and lines 8-9 “at least one upper flange”. Further clarification is needed.
Claim 2 recites in line 3 “the contact points” which has insufficient antecedent basis, as no “contact points” have been previously introduced in the claims. Further clarification is needed.
Claim 3 recites “one or more supporting profiles” in line 4. However, it is unclear what exactly is catalogued as a “supporting profile”. What is this “profile”? Further clarification is needed.
Claim 6 recites the limitation “lifting device” 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 specification as filed is silent as to any particular structure that defines this “lifting device”. 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 9 recites “a cross frame module” and “a longitudinal frame module” in lines 2-3. However, since claim 1, from which claim 9 directly depends on, sets forth that there are “at least two longitudinal frame modules” and “at least two cross frame modules”, it is unclear to which of the “at least two longitudinal modules”, “a longitudinal frame module” is referring to and to which of the “at least two cross frame modules”, “a cross frame module” is referring to. Is there an additional third cross frame module and an additional third longitudinal frame module? Further clarification is needed.
Claim 10 recites:
“the longitudinal frame module” in line 3. However, since claim 1, from which claim 10 directly depends on, sets forth that there are “at least two longitudinal frame modules”, it is unclear to which of the “at least two longitudinal modules”, “the longitudinal frame module” is referring to. Further clarification is needed.
“the cross frame module” in line 4. However, since claim 1, from which claim 10 directly depends on, sets forth that there are “at least two cross frame modules”, it is unclear to which of the “at least two cross modules”, “the cross frame module” is referring to. Further clarification is needed.
“the end” of the cross frame module in line 4, which has insufficient antecedent basis, as no “end” of the cross frame module has been previously introduced.
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(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. US 2006/0153653.
In regards to claim 1, Lu discloses a machine tool (Figures 1-5) for the processing and handling of plate-shaped workpieces with a machine table comprising at least two longitudinal frame modules (longitudinal 70) and at least two cross frame modules (cross frames 70, that cross longitudinal 70), wherein each longitudinal frame module (70) is connected to the at least two cross frame modules (70) by fastening means and each longitudinal frame module (70) comprises an upper flange (70) and a lower flange (70), which are formed from metallic profiles (steel), and which are connected to one another via spaced posts (10/70), wherein a guide rail (11) configured for the movable mounting of a tool is supported on at least one upper flange (70), wherein on each longitudinal frame module (70) the posts (10/70) are welded to the respective upper flange (70) and the lower flange (70) (see paragraph [0046]) or each longitudinal frame module (70) is connected to the at least two cross frame modules (70) via mechanical fastening means configured for forming a rack of the machine table of the machine tool. Lu discloses in paragraph [0046] that the longitudinal frame module (structural steel beams 70) in each structural assembly may be attached to other structural steel beams (such as the posts 10/70 and the cross-frame modules 70) by welding, bolts, rivets, clamps or the like. However, fails to explicitly disclose the combination of 1) having the connection between the posts (10/70) and respective upper and lower flanges be via a weld and 2) having the connection between the longitudinal frame module (70) and the at least two cross frame modules be via mechanical fastening means.
Nevertheless, a person having ordinary skill in the art would have recognized that there are some structural elements within a machine frame that need to be able to be removably fastened (e.g. modular) in order to be easily replaced. This allows for the removal and replacement of such elements instead of replacing the entirety of the frame. Thus, since Lu does disclose that the connections may be via welding, bolts, rivets, clamps or the like, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed, to try having combinations of different types of attachment means such as welding connections in some areas and bolt connections in others, based on obvious design choice scenario such as depending on arbitrary machining requirements the desirability and possibility of replacing a portion of the structure of the frame when such structure is damaged, instead of replacing the entire frame.
In regards to claim 2, Lu discloses the machine tool according to claim 1, Lu also discloses that that the two longitudinal frame modules and the two cross frame modules, contacting at a point, but Lu is silent as to how the contact points are treated. However, the recitation that the contact points are surface-treated, is considered to be a product by process limitation. In product-by-process claims, "once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference." MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the "patentability of a product does not depend on its method of production." In re Thorpe, 227 USPQ 964,966 (Fed. Cir.1985).
In regards to claim 3, Lu discloses the machine tool according to claim 1, Lu also discloses that each cross frame module (70) comprises a lower base profile (70) and an upper horizontal base profile (70), which are connected to one another via one or more supporting profiles (in the same was as presented by Applicant).
In regards to claim 4, Lu discloses the machine tool according to claim 1, Lu also discloses that there are two of the guide rails (11) mounted at a distance from one another, and wherein a movable portal (any movable portal shown in Figure 5, such as 50 or 20) is held on the two guide rails (11) mounted at a distance from one another.
In regards to claim 5, Lu discloses the machine tool according to claim 4, Lu also discloses a tool (61) is held on the movable portal (50).
In regards to claim 6, Lu discloses the machine tool according to claim 4, Lu also discloses a lifting device (61) configured for handling the processed workpieces is held on the movable portal (50).
In regards to claim 7, Lu discloses the machine tool according to claim 1, Lu also discloses a plurality of mounting plates (in the same way as presented by Applicant) configured for supporting the guide rail (11) are fixed on the upper flange (70).
In regards to claim 8, Lu discloses the machine tool according to claim 1, Lu also discloses that the at least two cross frame modules (70) are screwed to the longitudinal frame modules (70)([0046]).
In regards to claim 9, Lu discloses the machine tool according to claim 1, Lu also discloses that a section of a cross frame module (70) and a section of a longitudinal frame module (70) are supported on a base plate (as presented by Applicant). If the applicant considers that the current interpretation of Lu fails to explicitly teach that “a base plate”, the Examiner takes Official Notice: on the fact that it is well known in the art of machine frames, to have lower portions of the frame be disposed on a base plate, to provide stability and support to the frame structure.
Therefore, the examiner takes Official Notice that it would have been obvious to one of ordinary skill at the time the Applicant’s invention was filed, to modify Lu’s machine frame to include a base on which a section of the cross frame module and longitudinal frame module are supported, for stability and support/
In regards to claim 10, Lu discloses the machine tool according to claim 1, Lu also discloses that at least on one side the longitudinal frame module (70) with the guide rail (11) and the upper flange (70) protrude beyond the end of the cross frame module (Figure 1).
In regards to claim 11, Lu discloses the machine tool according to claim 1, Lu also discloses that the machine table (30) forms a flat support for plate-shaped workpieces (Figures 1 and 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
Examiner interviews are available via telephone, 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, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
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