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
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.
Election/Restrictions
Applicant’s election without traverse of Invention I, Species C, claims 1, 4-9, 11-22, and 24-25 in the reply filed on 22 May 2026 is acknowledged.
Claims 17-19 depend from withdrawn and canceled claim 10, and have therefore been withdrawn from consideration.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 22b, 42b, 68b, 68ba, 70b, and 72b. 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. 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 Objections
Claim 15 is objected to because of the following informalities: in claim 15, line 2, “he” should be replaced with “the”. Appropriate correction is required.
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, 4-9, 11-16, 20-22, and 24-25 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 claims 1, 14, and 20, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, the term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 16, the term "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
In claims 13 and 21, it is unclear whether the phrase “a receiving recess” has antecedent basis, as parent claim 1 recites “a receiving recess” as an optional limitation.
Claim 16 recites the limitation "at least one form-fitting element" in line 2. However, there is already antecedent basis for this limitation in parent claim 14, making it unclear whether this limitation refers to the same element or a different one. For the purposes of examination, it has been assumed that this limitation refers to the same at least one form-fitting element.
Claim 16 recites the limitation “the instantaneous fixing position” in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "a fixing recess" in line 9. However, there is already antecedent basis for this limitation in the claim, making it unclear whether this limitation refers to the same element or a different one. For the purposes of examination, it has been assumed that this limitation refers to the same fixing recess.
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, 4, 6, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haimer et al. (US 2008/0185793 A1).
Regarding claim 1, Haimer et al. discloses a length-adjustment device (embodiment of figure 6) for an adjustment of a longitudinal position of a tool 15e in a tool receiving opening 13e of a tool holder 1e, with at least one exchangeable stop element 93e (exchangeable by bayonet connection with sleeve part 91e) for a mechanical fixing of the longitudinal position of the tool in the tool receiving opening, with a stop receiving element 91e, supported in a longitudinally movable manner, for receiving the stop element (by bayonet connection), in particular by means of a receiving recess (in stop sleeve 45e) which partially accommodates the stop element, and with a coupling unit 107e which is configured for an, in particular at least substantially tolerance-free, releasable coupling between the stop element and the stop receiving element along a longitudinal axis of the length-adjustment device, characterized in that wherein the coupling unit has an exchange position (position in which the stop element is not fixed by bayonet connection to the stop receiving element), in which a removal and an insertion of the stop element for creating or releasing the coupling between the stop element and the stop receiving element is enabled, and has a fixing position (position in which the stop element is fixed to the stop receiving element by bayonet connection), in which the stop element and the stop receiving element are fixedly coupled with each other, wherein the exchange position is positionally fixed along the longitudinal axis and wherein the fixing position is displaceable along the longitudinal axis (against the force of spring 67e).
Regarding claim 4, Haimer et al. discloses wherein one of several possible fixing positions is arranged along the longitudinal axis in a position that is identical to the exchange position (the fixing positions may be identical to the exchange position depending on the extent to which spring 67e is depressed).
Regarding claim 6, Haimer et al. discloses wherein the coupling unit 107e has a maximal transverse extent of at most 1.5 times, preferably at most 1.25 times, a maximal transverse extent of the stop element 93e (the coupling unit and stop element has the same maximal transverse extent).
Regarding claim 11, Haimer et al. discloses further comprising a guide element (narrow portion of opening 31e, see figure 6) configured for guiding a longitudinal movement and/or a rotational movement of the stop receiving element 91e.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Haimer et al.
Regarding claim 7, Haimer et al. discloses the invention substantially as claimed, except Haimer et al. does not disclose wherein the coupling unit has a maximal transverse extent of at most 8 mm. However, it would have been an obvious matter of design choice to have selected a tool holder of a certain size such that the coupling unit has a maximal transverse extent of at most 8 mm for the purpose of having a tool holder of the appropriate size for a machine tool, 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 5, 8-9, 12-16, 20-22, and 24-25 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 8 June 2026
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