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 .
DETAILED ACTION
This office action is in response to Applicant’s initial application filed 4 October 2024.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “the guide channel has a cover connected to a film hinge” and “wherein the magnet is arranged by a snap-on mechanism in a form-fitting manner or by an adhesive attachment in a firmly bonded or magnetic manner or via another magnet” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-13 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 “A stationary machine tool for machining, a core drill, the machine tool comprising” in line 1. It is unclear whether the limitation “a core drill” is positively recited or is an optional limitation related to the stationary machine tool. For the purposes of examination this limitation has been considered to be optional.
Claim 5 recites the limitation "the drill motor cable" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites “wherein the first tool stand housing interior has an upper area and a lower area relative to a dashed line below.” It is unclear how “a dashed line below” is to be interpreted in the claim, as “a dashed line below” does not provide any metes and bounds that would convey understanding to one of ordinary skill in the art as to how to locate or define the dashed line, and what it should be below. For the purposes of examination, it has been assumed that this limitation should read “wherein the first tool stand housing interior has an upper area and a lower area that is below a dashed line horizontally dividing the first tool stand housing interior.”
Claim 9 recites the limitation "the lower area" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation “wherein the magnet is a two-pole neodymium magnet with a diameter of more than 5 mm”, and the claim also recites “or more than 10 mm, or more than 20 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 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 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, 3-4, 8-10, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng (CN 211218877 U).
Regarding claim 1, Zheng discloses a stationary machine tool (CNC milling machine) for machining, the machine tool comprising: a tool stand 1 with a first tool stand housing interior 4; a chip guidance system comprising 5/22/23 at least one magnet 23 and a magnetic field induced by the at least one magnet, the at least one magnet in the first tool stand housing interior being arranged such that chips created by a machining process and entering the first interior of the tool stand housing are deflected by the chip guidance system; a motor (motor for magnet roller 5); a second tool stand housing interior 2 with an electronic unit (milling machine control connected to milling tool, not labeled, see figure 1) arranged therein; and a partition wall (wall of flow passage 4, see figure 1) separating the second tool stand housing interior from the first tool stand housing interior, the partition wall comprising at least one opening (outlet opening of liquid cooling plate 3) so that there is a connection between the motor and the electronic unit, wherein the magnet is attached to the partition wall (see figure 1).
Regarding claim 3, Zheng discloses wherein the first tool stand housing interior 4 is partly formed by a removable housing cover (walls of flow passage 4).
Regarding claim 4, Zheng discloses wherein the magnet 23 is adapted to be reversibly removed after removal of the housing cover (the magnet may be removed when the flow passages are disassembled).
Regarding claim 8, Zheng discloses wherein the first tool stand housing interior 4 has an upper area (vertical portion in figure 1) and a lower area (slanted portion in figure 1) relative to a dashed line below.
Regarding claim 9, Zheng discloses wherein the magnet 23 is arranged in the lower area (see figure 1).
Regarding claim 10, Zheng discloses wherein the magnet 23 is a permanent magnet (neodymium iron boron magnet).
Regarding claim 13, Zheng discloses wherein the magnet 23 is arranged by a snap-on mechanism 26 in a form-fitting manner.
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 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 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 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng.
Regarding claim 11, Zheng discloses the invention substantially as claimed, except Zheng does not disclose wherein the magnet is an electromagnet. However, the Examiner takes Official Notice that it is well known in the art of magnets to substitute a permanent magnet with an electromagnet for the purpose of being able to turn the magnetic field of the magnet on and off.
Regarding claim 12, Zheng discloses wherein the magnet is a two-pole neodymium magnet (one of the plurality of magnets 23). Zheng does not disclose the magnet has with a diameter of more than 5 mm. However, it would have been an obvious matter of design choice to have selected a magnet having a diameter more than 5 mm for the purpose of using the magnet with a machine tool requiring a magnet of this size, because such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)
Allowable Subject Matter
Claim 2 and 5-7 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 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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/ERIC A. GATES/Primary Examiner, Art Unit 3722 9 June 2026
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