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 .
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:
quick-clamping element (e.g. claim 2) - a screw and a locking element in the form of a ball and spring (paragraph 27)
fixing element (e.g. claim 4) - a ball (paragraph 7)
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.
Claim 8 is 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 8 recites "An assembly method for assembling a clamping mandrel adapter device according to claim 1". However, a method claim must recite active, positive steps delimiting how the method is performed. The lack of steps here makes the claim indefinite. See MPEP 2173.05(q).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. (U.S. PGPub 2019/0217400, equivalent to WO2017211554 in the IDS) in view of Ward (U.S. PGPub 2018/0085833).
Claim 1: Ding et al. discloses a clamping mandrel adapter device (400) for assembling a hole saw unit (470 - e.g. paragraph 47) on a machine tool (100 - paragraph 37), the hole saw unit including at least one centering drill bit (170 - paragraph 41) and a hole saw (470), the clamping mandrel adapter device comprising: at least one main adapter body including at least one tool interface (212) for assembling on the machine tool (paragraph 42) and at least one tool holder (230) configured to receive the hole saw unit (Id.); at least one circular-cylindrical receiving region (237) configured to receive the at least one centering drill bit (paragraph 44); and a hollow cylindrical receiving region (214) configured to receive the hole saw (portion 220 thereof, paragraph 47, which may be integral with the hole saw 470, paragraph 62); wherein the at least one tool holder (230) includes a hollow cylinder with an inner lateral surface (surface defining 237) and an outer lateral surface (external surface of 230), and the at least one tool holder delimits the at least one circular-cylindrical receiving region (237) with the inner lateral surface (e.g. Fig. 4), and at least partially delimits the hollow cylindrical receiving region with the outer lateral surface (Id.). Ding et al. does not disclose that the entire at least one main adapter body is a single piece, but rather that the parts thereof are assembled in a rotationally fixed manner via a screw connection (paragraph 55).
However, Ward teaches a similar adapter wherein the entirety of at least one main adapter body (74 having analogous tool interface end 94 and tool holder end 90 - paragraph 28) is a single piece (e.g. Fig. 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a single piece construction as taught by Ward since it would have simplified the construction by reducing the number of elements of the assembly. Additionally, it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Please note that in the instant application, Applicant has not disclosed any criticality for the integral construction of the adapter body.
Claim 8: An assembly method for assembling a clamping mandrel adapter device according to claim 1 is implied from the above, noting a lack of any particular claimed steps.
Claim 9: A machine tool system with a machine tool (100) and with a clamping mandrel adapter device according claim 1 is further disclosed as cited above.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. and Ward as applied to claim 1 above, and further in view of Novak et al. (U.S. PGPub 2009/0279972).
Claim 2: Ding et al. further discloses a quick-clamping unit including at least one quick-clamping element (a clamping ring 499 engaging a ball 432 - paragraphs 56, 59-60) arranged in a bore (495) of the at least one main adapter body (Id.), wherein the quick-clamping unit is configured to fix and to release the at least one centering drill bit at least axially in the circular-cylindrical receiving region of the at least one centering drill bit (Id.). The quick-clamping element does not include a screw and a locking element in the form of a ball and spring per the interpretation under 112(f). However, Novak et al. teaches a similar quick-clamping element including a set screw (288), ball (284), and spring (286 - paragraph 107). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a quick-clamping element as taught by Novak et al. since it provides adjustability to the spring tension (Id.).
Claims 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. and Ward as applied to claim 1 above, and further in view of Miyanaga (U.S. Patent 6,966,730, cited in IDS).
Claim 3: Ding further discloses at least one clamping unit configured to axially fix and release the hole saw, wherein the at least one clamping unit comprises (i) at least one bushing (211/214) connected as a single piece to the at least one main adapter body (Fig. 4, paragraph 43), the at least one bushing completely enclosing at least a part of the hole saw (portion 220 thereof) received by the hollow cylindrical receiving region (paragraph 47), and (ii) at least one sleeve (450) slidably mounted on the at least one bushing and configured to enable the hole saw to be fixed and released by sliding (paragraphs 65-66), and wherein the at least one bushing is disposed between the at least one sleeve and the at least one main adapter body (Fig. 4). The clamping unit is not rotary such that the sleeve is rotatably mounted on the bushing.
However, Miyanaga teaches a similar clamping unit wherein the clamping unit can be rotary as an alternative to axial (column 7, line 66 - column 8, line 21). Since both references teach clamping units for securing tools in adapters, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have to have substituted one configuration for the other to achieve the predictable result of clamping the tool (MPEP 2143 I. B.).
Claim 4: As modified by Miyanaga, the at least one rotary clamping unit has at least one fixing element (balls 430 of Ding; analogously balls 5 of Miyanaga) configured to fix or to release the hole saw depending on one of at least two rotational positions of the at least one sleeve (Miyanaga, e.g. column 10, line 57 - column 11, line 15 and 47-54).
Claim 5: As modified by Miyanaga, the at least one rotary clamping unit has at least one return spring (coil spring 4 of Miyanaga) configured to hold and/or to reset the at least one sleeve in a fixing position of the at least two rotational positions (column 8, lines 7-12).
Claim 6: Ding further discloses the at least one rotary (as modified by Miyanaga) clamping unit has at least one locking ring (415 of Ding) and at least one further return spring (420), and the at least one further return spring is configured to press the at least one fixing element by the at least one locking ring out of the hollow cylindrical receiving region in a radial direction (paragraphs 58. 65).
Claim 7: Miyanaga further discloses that the at least one bushing has a radially outwardly projecting, peripherally extending protective shoulder (1t) arranged on a side of the at least one main adapter body facing away from the at least one tool interface and intended to protect the at least one sleeve in an axial direction from an external influence during operation of the machine tool. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided such a shoulder on the bushing of Ding to have acted as a front stop for the sleeve, for example. It is further noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the limitation “intended to protect the at least one sleeve in an axial direction from an external influence during operation of the machine tool” is recited as pertaining to intended use of the shoulder, and the shoulder 1t would be capable of performing the claimed function at least to some extent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references disclose similar examples of clamping adapters for hole saws.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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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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/Matthew P Travers/Primary Examiner, Art Unit 3726
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