Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
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. Thus, driving means and fastening means in claims 4, 6, and 16 are interpreted under 35 U.S.C. 112(f). Driving means is interpreted as a spindle. Fastening means is interpreted as claimed in claim 7, i.e. holes configured to receive screws, or interpreted as screws nails, rivets, welds, adhesives, bolts and nuts, hook-and-slot fasteners, interlocking elements, and the like.
Claim Objections
Claim 16 is objected to because of an informality: “in a longitudinal axis” should be changed to “along a longitudinal axis”, “in a direction parallel to a longitudinal axis”, etc. Appropriate correction is required.
Rejections under 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.
Claims 1, 3-10, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 5,332,295 (“Vogel”).
Claim 1 recites a spacer. Vogel teaches a device that can connect to a first component on one end and a second component on the opposite end so that the device functions as a spacer between the two components (see figs. 1 & 2). Vogel further teaches a housing (1) comprising: an elongated connector configured to interface with a turret (figs. 1-2, wherein the elongated cylindrical portion extending to the left of flange 2 is capable of contacting/interfacing with a surface of a turret); and a tool holder interface configured to support a tool holder (figs. 1-2, wherein flange 3 or the cylindrical portion extending to the right of flange 3 are capable of being in contact/supporting a portion of a tool holder), wherein the housing comprises a hollow cavity (5) configured to accommodate a shaft (6), and wherein the shaft is configured to engage with an extension shaft of the tool holder. Since the claim is only directed to the spacer, the shaft merely has to be capable of engaging with an extension shaft of a hypothetical tool holder. Since shaft 6 has threaded ends, the shaft 6 is capable of engaging and being threaded to internal threads of an extension shaft of a tool holder.
Regarding claim 3, Vogel further teaches the shaft is mounted with one or more bearings (7) (fig. 2, col. 2 lines 55-64).
Claim 4 recites the turret comprises a driving means configured to drive the extension shaft through the shaft of the spacer. Since the claim is only directed to the spacer, the shaft merely has to be capable of being connected to the driving means and extension shaft in order to drive the extension shaft. Since shaft 6 has both ends threaded and is rotatable via bearings 7 (fig. 2, col. 2 lines 55-64), the shaft 6 is capable of being threaded/attached to both a driving means (spindle) of the turret and an extension shaft so that when the spindle is driven the extension shaft is driven through the shaft 6.
Claim 5 recites the shaft is configured to drive the extension shaft to linearly extend and/or retract a tool attached to the tool holder. When the spacer of Vogel is attached to a turret only via shaft 6 (i.e. the elongated connector is not fastened to the turret—it merely interfaces/contacts it), the spindle of the turret is capable of driving the shaft and spacer linearly to extend or retract the spacer with respect to the turret. Thus, when a tool holder having a tool is attached to the opposite end of the spacer, the tool holder and tool will also be driven linearly to extend or retract with respect to the turret.
Claim 6 recites the housing comprises a fastening means configured to fasten the spacer to the turret and/or the tool holder. Vogel teaches the spacer having flanges 2 & 3 each having holes that a capable of receiving fasteners therein that attach the flanges to the turret and/or the tool holder (figs. 1-2).
Claim 7 recites the fastening means comprises one or more holes in the housing, and wherein the one or more holes are configured to allow the housing to be fastened to the tool holder and/or the turret using one or more corresponding screws. This is taught as detailed in the rejection to claim 6, above.
Claim 8 recites the one or more holes are at least one of: threaded holes or clearance holes. The holes 4 of Vogel are capable of accepting fasteners having a thread diameter less than the diameter of the holes so that the holes 4 are capable of being clearance holes.
Claim 9 recites the one or more screws are socket head cap screws. The holes 4 of Vogel are capable of accepting head cap screws therein to fasten the spacer to a turret or tool holder since the holes can accept the shaft of the screw and the head can rest on the flange.
Claim 10 recites the tool holder interface is defined on at least one of a longitudinal end of the housing or a radial side of the housing. As illustrated in fig. 2 of Vogel, the longitudinal end of the spacer is capable of contacting/interfacing and supporting a tool holder. Further, the radially extending side of flange 3 is also capable of interfacing and supporting a portion of a tool holder.
Claim 16 recites a spacer. Vogel teaches a device that can connect to a first component on one end and a second component on the opposite end so that the device functions as a spacer between the two components (see figs. 1 & 2). Claim 16 further recites a housing comprising: an elongated connector configured to interface with a turret comprising a driving means, wherein the elongated connector is cylindrical. Vogel teaches an elongated cylindrical portion extending to the left of flange 2 that is capable of contacting/interfacing with a surface of a turret (figs. 1-2). Further, the turret is capable of having a driving means/spindle therein that can attach to threaded portion of shaft 6 (fig. 2 of Vogel).
Claim 16 further recites a radial tool holder interface configured to support a tool holder, the radial tool holder interface comprising one or more holes configured to allow the housing to be fastened to the tool holder or the turret via one or more corresponding screws. Vogel teaches the spacer having radially extending flange 3 having holes 4 that a capable of receiving fasteners therein that attach the flange to a tool holder so that the tool holder contacts and is supported by the flange 3 (figs. 1-2).
Vogel further teaches a hollow cavity (5) extending through the elongated connector (fig. 1-2), a shaft (6) disposed within the hollow cavity of the housing (fig. 2), the shaft comprising two or more bearings (7) and an engagement member (13) defined on a first end of the shaft (fig. 2, col. 2 lines 55-64), wherein the engagement member (13) protrudes out from the hollow cavity of the elongated connector in a longitudinal axis of the spacer (fig. 2).
Claim 16 also recites the shaft configured to engage with the tool holder and the driving means of the turret, wherein the engagement member is male to engage with a corresponding female member on the driving means. Since the claim is only directed to the spacer, the shaft merely has to be capable of engaging with an extension shaft of a hypothetical tool holder and a spindle of a hypothetical turret. Since shaft 6 has threaded ends, the shaft 6 is capable of engaging and being threaded to internal threads of an extension shaft of a tool holder and internal threads of a spindle of a turret. Further since the threads of the shaft 6 are external/male threads that can be threaded in internal/female threads, the engagement member of Vogel is male that is capable of engaging with a female thread/member on the driving means.
Claim 17 recites the shaft comprising a provision on a second end of the shaft, the provision configured to interface with an extension shaft of the tool holder, wherein the shaft and the extension shaft are rotationally coupled. The threads on the second end of the shaft that are configured to couple to female threads of the extension shaft read on the claimed “provision”.
Claims 1 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP-2000246521-A (“JP521”).
Claim 1 recites a spacer. JP521 teaches a device 7 that is at least capable of connecting to a turret and a tool holder so that device 7 functions as a spacer of the two components (see fig. 2 & ¶ [0033]-[0034], wherein all references to the JP521 specification refer to the machine translation submitted herewith). Vogel further teaches a housing (7) comprising: an elongated connector (6) configured to interface with a turret (figs. 2, ¶ [0034]); and a tool holder interface (5) configured to support a tool holder (figs. 2, ¶ [0033]), wherein the housing comprises a hollow cavity (24) configured to accommodate a shaft (fig. 2, ¶ [0041]), and wherein the shaft is configured to engage with an extension shaft of the tool holder. Since the claim is only directed to the spacer configured to accommodate a shaft, the spacer is not required to comprise the shaft—it merely has to be capable of receiving a shaft within the hollow cavity so that the shaft can engage an extension shaft of a hypothetical tool holder. Since the spacer 7 has a through hole extending through the entire longitudinal length thereof (see fig. 2), the through hole is capable of receiving a shaft (e.g. element 25 of JP521, or another shaft) that can engage with an extension shaft of a tool holder (e.g. extension shaft 2 of tool holder 1, or a differently structured extension shaft of a different kind of tool holder) (see fig. 2 & ¶ [0041] of JP521).
Claim 4 recites the turret comprises a driving means configured to drive the extension shaft through the shaft of the spacer. Since the claim is only directed to the spacer, and does not require the turret, extension shaft, or shaft, the spacer of JP521 merely has to be capable of this intended use. Since the through hole of the spacer 7 of JP521 extends the entire longitudinal length, the through hole is capable of receiving a shaft that connects to a spindle of the turret and an extension shaft of the tool holder so that rotation of the spindle rotates the extension shaft through the shaft.
Claim 5 recites the shaft is configured to drive the extension shaft to linearly extend and/or retract a tool attached to the tool holder. Since the claim is only directed to the spacer, and does not require the turret, extension shaft, or shaft, the spacer of JP521 merely has to be capable of this intended use. Since the through hole of the spacer 7 of JP521 extends the entire longitudinal length, the through hole is capable of receiving a shaft that connects to a spindle of the turret and an extension shaft of the tool holder so that the shaft can linearly extend/retract a tool attached to the tool holder. For example, bolt 5 of Vogel attaches to a portion of the tool holder to pull the tool holder in a linear direction (¶ [0041] of JP521).
Claims 1, 4-10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2023/0420165 (“Broderick”).
Claim 1 recites a spacer. Broderick teaches a device 2 that can interface with a first component on one end and a second component on the opposite end so that the device functions as a spacer between the two components (see fig. 1). Broderick further teaches a housing (21/22) comprising: an elongated connector (22) configured to interface with a turret (figs. 1-2, wherein the elongated connector 22 is capable of contacting/interfacing with a surface of a turret); and a tool holder interface (21) configured to support a tool holder (figs. 1-2, wherein flange 21 is capable of being in contact/supporting a portion of a tool holder), wherein the housing comprises a hollow cavity configured to accommodate a shaft (fig. 1, wherein the cavity is capable of receiving a shaft), and wherein the shaft is configured to engage with an extension shaft of the tool holder. Since the claim is only directed to the spacer configured to accommodate a shaft, the spacer is not required to comprise the shaft—it merely has to be capable of receiving a shaft within the hollow cavity so that the shaft can engage an extension shaft of a hypothetical tool holder. Since the spacer 2 has a through hole extending through the entire longitudinal length thereof (see fig. 1-2), the through hole is capable of receiving a shaft that can engage with an extension shaft of a tool holder.
Claim 4 recites the turret comprises a driving means configured to drive the extension shaft through the shaft of the spacer. Since the claim is only directed to the spacer, and does not require the turret, extension shaft, or shaft, the spacer of Broderick merely has to be capable of this intended use. Since the through hole of the spacer 2 of Broderick extends the entire longitudinal length, the through hole is capable of receiving a shaft that connects to a spindle of the turret and an extension shaft of the tool holder so that rotation of the spindle rotates the extension shaft through the shaft.
Claim 5 recites the shaft is configured to drive the extension shaft to linearly extend and/or retract a tool attached to the tool holder. Since the claim is only directed to the spacer, and does not require the turret, extension shaft, or shaft, the spacer of Broderick merely has to be capable of this intended use. Since the through hole of the spacer 2 of Broderick extends the entire longitudinal length, the through hole is capable of receiving a shaft that connects to a spindle of the turret and an extension shaft of the tool holder so that the shaft can linearly extend/retract a tool attached to the tool holder.
Claim 6 recites the housing comprises a fastening means configured to fasten the spacer to the turret and/or the tool holder. Broderick teaches the spacer having flange 21 having holes 6 that a capable of receiving fasteners therein that attach the flange to the turret and/or the tool holder (figs. 1-2 ¶ [0058]). Broderick also teaches screws 61 that are received by the holes (fig. 2, ¶ [0058]).
Claim 7 recites the fastening means comprises one or more holes in the housing, and wherein the one or more holes are configured to allow the housing to be fastened to the tool holder and/or the turret using one or more corresponding screws. This is taught as detailed in the rejection to claim 6, above.
Claim 8 recites the one or more holes are at least one of: threaded holes or clearance holes. As illustrated in fig. 2 of Broderick, the holes 6 are clearance holes since clearance can be seen with respect to the screw 61, whereas no clearance is illustrated with respect to threaded holes in component 9.
Claim 9 recites the one or more screws are socket head cap screws. The holes 6 of Broderick are capable of accepting head cap screws therein to fasten the spacer to a turret or tool holder since the holes can accept the shaft of the screw and the head can rest on the flange.
Claim 10 recites the tool holder interface is defined on at least one of a longitudinal end of the housing or a radial side of the housing. As illustrated in fig. 1-2 of Broderick, the tool holder interface 21 is both at a longitudinal end of the housing and comprises a radially extending surface.
Regarding claim 12, Broderick further teaches the housing is made of steel (¶ [0009] & [0041]).
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP521 as applied to claim 1 above.
Regarding claim 11, JP521 fails to explicitly teach the housing is between about 1" to about 3" in length. However, mere scaling up or down of a prior art device capable of being scaled up or down does not establish patentability (see MPEP 2144.04(IV)(A)). Thus, merely scaling the entire system of JP521 up or down so that the spacer has a length between 1-3 inches does not patentably distinguish the claim over the prior art. In addition, it is possible to create machine tools that are inches in length as micro manufacturing and nano technologies are known and can produce products much smaller.
Regarding claim 12, JP521 fails to explicitly teach the housing is made of steel. However, the examiner is taking Official Notice that it is well known in the art of machining/machine tools for tool holders and the like to be formed from steel, including tool steel, carbon steel, high speed steel, etc.). Thus, in order to have the benefits of steel such as hardness, strength, wear resistance, and able to work in elevated temperatures, it would be obvious to form the holder/spacer 7 of JP521 out of steel.
Allowable Subject Matter
Claim 18 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (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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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights