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 without traverse of Species I, drawn to claims 16-37 and 42-43 in the reply filed on 11/28/2025 is acknowledged.
Claims 38-41 and 44-49 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/28/2025.
Status of Claims
This action is in reply to the response filed on 11/28/2025. Claims 38-41 and 44-49 are withdrawn. The IDS submitted on 12/01/2025 is acknowledged. Claims 16-37 and 42-43 are currently pending and have been examined.
Claim Objections
Claims 16, 18-19, 24, 28-33, 35-37 and 41-42 are objected to because of the following informalities:
A) Regarding claims 16, 18-19, 24, 28-29, 33, 35-37 and 41-42, every recitation of the term “at least one file element” after the recitation of “at least one file with an abrasive surface” in claim 16, should read as “the at least one file element”.
B) Regarding claims 30-33 and 35-37 the term “the depth direction should read as “[[the]]a depth direction” since the depth direction was not previously recited in the preceding claims.
C) Regarding claim 33, the limitation “wherein at least lone file element is arranged on the file base is such a manner that a minimum turning point of the machining surface one of lies in a plane defined by the sliding surface and is set back from the plane by a vertical distance in the depth direction” Should read as “wherein the at least lone file element is arranged on the file base body is such a manner that a minimum turning point of the machining surface lies in a plane defined by the sliding surface and is set back from the plane by a vertical distance in [[the]]a depth direction”.
Appropriate correction is required.
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: “a holding element for holding the at least one file element” in claim 26. Where in the instant case the holding element is interpreted per the applicant’s disclosure in page 19, lines 1-2 and applicant’s figure 3, item 24 to be a fine adjustment screw.
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 16-37 and 42-43 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 16 (New), the limitation “wherein the at least one file element and the depth stop element are arranged next to one another in a plane oriented perpendicular to the longitudinal axis” is indefinite because there is only one recited depth stop and there exists a condition by the claim that there are more than three file elements by the term “at least one”, such that there becomes an issue, where how can more than three file elements be arranged next to the depth stop element? For purposes of examination the Office will interpret the limitation(s) to read as “[[a]]at least one depth stop element with a non-abrasive sliding surface, wherein the at least one file element and the at least one depth stop element are arranged next to one another in a plane oriented perpendicular to the longitudinal axis”.
Claims 17-37 and 42-23 are rejected as being dependent on claim 16.
Regarding claim 19 (New), the limitation “wherein the at least one file element and the depth stop element are connected to teach other in pairs” is indefinite because there is only one recited depth stop element, but the recitation requires “pairs” which implies more than one depth stop element. For purposes of examination the Office will interpret the limitation in claim 16 to read as “[[a]]at least one depth stop element with a non-abrasive sliding surface” which will ensure that the elements are recited to be in pairs in claim 19.
Regarding claim 24 (New), the limitation “wherein at least one of the contour of the machining surface and the sliding surface is constant along the longitudinal axis” is indefinite because “the contour(s) of the machining surface and the sliding surface” lack proper antecedent basis. For purposes of examination the Office will interpret the limitation to read as “wherein at least one of [[the]]a contour of the machining surface and the sliding surface is constant along the longitudinal axis”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 16-18, 20-31, 35, 37, 42 and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pointer (US Patent No. 1,570,177), hereinafter referred to as Pointer.
Regarding claim 16 (New), Pointer discloses a file for creating a non-planar contour on a workpiece [Pointer, fig 1, apparatus filed a non-planar surface on workpiece 16], the file comprising:
a longitudinal axis [Pointer, fig 2, in the instant case, the longitudinal axis is the vertical axis through the apparatus],
at least one file element with an abrasive machining surface [Pointer, fig 2, 6 is sand paper which can be use to file and has an abrasive surface. Further the Applicant has not claimed further structure of the file element beyond having an abrasive surface, thus by the broadest reasonable interpretation, sandpaper meets the limitation of the claim as currently stated],
at least one depth stop element with a non-abrasive sliding surface [Pointer, fig 2, items 2-5 and 9 are a depth stop element, where 9 makes up the whole of a plurality of slides and 9 is treated as a whole],
wherein the at least one file element and the at least one depth stop element are arranged next to one another in a plane orientated perpendicular to the longitudinal axis [Pointer, fig 2, 9 is arranged next to 6 in the vertical axis].
Regarding claim 17 (New), Pointer further discloses the file according to claim 16, wherein the file has a transverse curvature [Pointer, fig 2, where the curvature of 9 extends transversely (into the page) to the vertical axis].
Regarding claim 18 (New), Pointer further discloses the file according to claim 16, wherein the at least one file element and the depth stop element are connected to each other [Pointer, fig 2, 9 and 6 are connected to each other and move with each other].
Regarding claim 20 (New), Pointer further discloses the file according to claim 16, wherein the abrasive machining surface is designed to be concave [Pointer, fig 2, 6 is shown to be flexible and is arranged to have concave portions]. The Office notes that the recitation "is designed" is considered to be a product by process limitation. MPEP 2113 clearly states "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different processes." In this instance, the product taught by Pointer is the same as or makes the product claimed obvious, meeting the limitation of the claim.
Regarding claim 21 (New), Pointer further discloses the file according to claim 16, wherein the abrasive machining surface has a curvature with a radius of curvature [Pointer, fig 2, 6 has at least one curvature and by definition a radius of curvature that defines that at least one curvature].
Regarding claim 22 (New), Pointer further discloses the file according to claim 21, wherein the radius of curvature is greater than an original radius of curvature of the workpiece [Pointer, fig 2, since 6 must cover the surface to be abraded, 6 thus has a radius of curvature greater than that of the workpiece].
Regarding claim 23 (New), Pointer further discloses the file according to claim 16, wherein the at least one file element is profiled along the longitudinal axis [Pointer, fig 2, 9 has a profile in the vertical axis].
Regarding claim 24 (New), Pointer further discloses the file according to claim 16, wherein at least one of a contour of the machining surface and the sliding surface is constant along the longitudinal axis [Pointer, fig 2, the sliding surface or the vertical surface of 9 is constant along the vertical axis of the apparatus].
Regarding claim 25 (New), Pointer further discloses the file according to claim 16, wherein the at least one depth-stop element forms a file base body on which at least one recess for inserting the at least one file element is arranged [Pointer, fig 2, 2-5 form a file base body and has a recess in which 6 may be inserted depending upon the profile of 9 and the workpiece].
Regarding claim 26 (New), Pointer further discloses the file according to claim 25, comprising a holding element for holding the at least one file element [Pointer, fig 2, item 11 and 15 are functionally equivalent to a holding screw because for 11, a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art (11 is a bolt with a thread) for the corresponding element disclosed in the specification (the threaded fastener 24)].
Regarding claim 27 (New), Pointer further discloses the file according to claim 26, wherein the holding element is designed for holding the at least one file element in at least one recess [Pointer, fig 2, 11 is capable of holding 6 within the recess that is bounded by 9 by intermediate members]. The recitation "is designed" is considered to be a product by process limitation. MPEP 2113 clearly states "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different processes." In this instance, the product taught by Pointer is the same as or makes the product claimed obvious, meeting the limitation of the claim.
Regarding claim 28 (New), Pointer further discloses the file according to claim 25, wherein the at least one file element has an adjustment groove [Pointer, fig 4, 12].
Regarding claim 29 (New), Pointer further discloses the file according to claim 25, wherein the at least one file element has an adjustment groove forholding engagement of the holding element [Pointer, fig 4, 12].
Regarding claim 30 (New), Pointer further discloses the file according to claim 29, wherein the adjustment groove extends along a depth direction of the file [Pointer, fig 3, 12 extends into a direction of depth of the apparatus].
Regarding claim 31 (New), Pointer further discloses the file according to claim 28, wherein the adjustment groove has a variable groove depth in a depth direction of the file [Pointer, fig 4, the depth of 12 depends upon the number of slides 9 and is therefore variable as a user may add or remove slides as needed by the workpiece and thus varies the groove depth].
Regarding claim 35 (New), Pointer further discloses the file according to claim 25, wherein the at least one file element is arranged to be mechanically preloaded in the depth direction on the file base body [Pointer, fig 2, 6 is held in place in tension in the depth direction, where mechanically preloaded is interpreted to be “held in place in tension”].
Regarding claim 37 (New), Pointer further discloses the file according to claim 25, wherein the at least one file element is arranged on the file base body so as to be adjustable in the depth direction [Pointer, fig 2, 6 is sandpaper and the depth is adjusted by adding or subtracting slides of 9].
Regarding claim 42 (New), Pointer further discloses the file according to claim 16, wherein the at least one file element forms a file base body to which the depth stop element is fastened [Pointer, fig 2, 6 has a backing which is interpreted to be a body and 9 is fastened or connected to 6 by the backing of 6].
Regarding claim 43 (New), Pointer further discloses the file according to claim 16, wherein the at least one file element forms a file base body in which the at least one depth stop element is inserted into a recess [Pointer, fig 2, 6 has a backing which is interpreted to be a body and 9 is inserted into a recess within the backing of 6].
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 19 is rejected under 35 U.S.C. 103 as being unpatentable over Pointer (US Patent No. 1,570,177) alone, hereinafter referred to as Pointer.
Regarding claim 19 (New), Pointer discloses the file according to claim 18, wherein at least the one file element and the at least one depth stop element are connected to each other [Pointer, fig 2, 9 are connected to 6]
Pointer does not explicitly disclose wherein the at least one file element and the at least one depth stop element are connected to each other in pairs.
Pointer teaches more than one of slides within the at least one depth stop element [Pointer, fig 2, item 9 is made up of a plurality of slides].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to at least duplicate the at least one file element (item 6) of Pointer because per MPEP 2144.04(VI)(B) the duplication of parts is held obvious over the prior art. Where in the instant case, to have duplicated at least one file element (item 6) of Pointer is only a slight variation therefrom and would not produce an unexpected outcome and would have therefore constituted an obvious mechanical expedient before the effective filing date of the claimed invention. The predictable result being that at least two sandpapers, thus making a pair between at least two of the slides of the depth stop element (item 9) and two pieces of sandpaper (item 6).
Allowable Subject Matter
Claims 32-34 and 36 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Mor (US Patent No. 8,968,057) teaches a file for creating a non-planar contour on a workpiece [Mor, figs 2A-2C, 100], the file comprising:
a longitudinal axis [Mor, fig 2A, vertical axis through 100],
at least one file element with an abrasive machining surface [Mor, fig 4, 112.1 and col 10, lines 46-64 describing all of the various forms that 112.1 can take to be a file element],
a depth stop element with a non-abrasive sliding surface [Mor, fig 2A, 112],
wherein at least one file element and the depth stop element are arranged next to one another in a plane orientated perpendicular to the longitudinal axis [Mor, fig 4, showing 112 and 112.1 are arranged next to each other in the plane perpendicular to the vertical axis through 100].
Claridge et al (UK Patent Application Publication No. GB2256383) teaches a file for creating a non-planar contour on a workpiece comprising at least one file element with an abrasive machining surface [Claridge, fig 3, bottom surface of 2].
Bissoli (US PGPUB No. 2013/0139367) teaches a file for creating a non-planar contour on a workpiece, the file comprising:
a longitudinal axis [Bissoli, fig 7, axis along 1],
at least one file element with an abrasive machining surface [Bissoli, fig 7, 1, page 3, pp 0054 and page 2, pp 0029 teaching that 1 has a abrading],
a depth stop element with a non-abrasive sliding surface [Bissoli, figs 7-9, showing 9 engages with 1 and allows 1 to slide within 9 because items 5-8 forms a first class lever and allows 1 to bend and flex within the slot of 9],
wherein at least one file element and the depth stop element are arranged next to one another in a plane orientated perpendicular to the longitudinal axis [Bissoli, fig 7, there is in intersection of a plane in which 9 and 1 intersected along the longitudinal axis that is perpendicular to the longitudinal axis].
Regarding claim 32 (New), the prior art considered as a whole, alone or in combination, neither anticipates nor renders obvious “wherein the adjustment groove has a V-shaped groove profile in a plane perpendicular to a depth direction” together in combination with the rest of the limitations of the claim and in the independent claim. Where Pointer, Mor, Claridge and Bissoli do not each a V-shaped adjustment groove within the structure of the file base body.
Regarding claim 33 (New), the prior art considered as a whole, alone or in combination, neither anticipates nor renders obvious “wherein the at least one file element is arranged on the file base body in such a manner that a minimum turning point of the machining surface lies in a plane defined by the sliding surface and is set back from the plane by a vertical distance in a depth direction” together in combination with the rest of the limitations of the claim and in the independent claim. Where Pointer, Mor, Claridge, and Bissoli do not teach the minimum of the machining surface in a depth direction of the slides because the slides are variable and is not a fixed machining surface as required by the claim.
Claim 34 would be allowed as being dependent on claim 33.
Regarding claim 36 (New), the prior art considered as a whole, alone or in combination, neither anticipates nor renders obvious “wherein the at least one file element is arranged to be mechanically preloaded in the depth direction, by a compression spring, on the file base body” together in combination with the rest of the limitations of the claim and in the independent claim. Where Pointer, Mor, Claridge and Bissoli do not teach a compression spring as required by the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT NEIBAUR whose telephone number is (571)270-7979. The examiner can normally be reached M - F 8:00 am - 5:00 pm.
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, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT F NEIBAUR/Primary Examiner, Art Unit 3723