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
While claim recites “[a] column” in the preamble, the claims also recite to features of a combination (e.g., “a workbench on an upper side of a machine tool and supporting a spindle head that holds a spindle”). Furthermore, the claims include positive recitations of the features of the machine tool that breath life into the combination (e.g., “surface facing the workbench;” and “at least a portion of the intersection guide portion is closer to the workbench than the mounting surface”). As such, the claim is interpreted as a combination claim of the column and claimed features of the machine tool.
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 limitations are: up-and-down guide portion in claim 1; and intersection guide portion in claim 1.
Because this/these claim limitations 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 1-9 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 “in a plan view, at least a portion of the intersection guide portion is closer to the workbench than the mounting surface.” It is unclear of what feature in the claim the plan view is taken. Appropriate correction required.
Claim 2 recites “in a plan view” in Line 5. It is unclear of what feature in the claim the plan view is taken. There is already antecedent basis for “a plan view” in claim 1. As such, it is unclear whether this recitation is to a different plan view or the same plan view as previously recited. Appropriate correction required.
Claim 3 recites “the lower wall” in Line 2. There is insufficient antecedent basis for this limitation. Appropriate correction required.
Claim 3 recites “the lower wall has a protruding portion that protrudes toward the workbench than the mounting surface” in Lines 2-3. There appears to be a missing term in the clause after the term “workbench” and the term “than” (e.g., “more” or “less). Appropriate correction required.
Claims 4-6 each recite to “[a] machine tool” in the preamble. Yet, claim 1 already sets forth antecedent basis for a machine tool. As such, it is unclear whether the machine tool recited in claims 4-6 is the same as, or different from, the machine tool recited in claim 1. Appropriate correction required.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nozawa (JP 2005-297118 A).
(Claim 1) Nozawa discloses a column (A), disposed at an interval from a workbench (translation discloses as present but not shown) on an upper side of a foundation (5) of a machine tool and supporting a spindle head (3) that holds a spindle (Figs. 1, 2; 3b). The column includes: a mounting surface, disposed on a surface (surface in which guides 2 are mounted thereon) facing the workbench (translation - not shown) for mounting an up-down guide portion (2) that guides a movement of the spindle head in an up-down direction (Y-axis; Figs. 1, 2; translation); and an intersection guide portion (9, 11, 4), disposed on a lower wall of the column and guiding a movement of the column in an intersecting direction (Z-axis, translation) intersecting the up-down direction (Figs. 1, 2). In a plan view (Fig. 2), at least a portion (11) of the intersection guide portion is closer to the workbench (left in Figure 2, which is disclosed as the Z-axis direction) than the mounting surface (surface in which guides 2 are mounted).
(Claim 2) The intersection guide portion (9, 11, 4) includes a first intersection guide portion (11, 4), and a second intersection guide portion (9, 4) disposed further on an opposite side to the workbench than the first intersection guide portion (Figs. 1, 2).1 In a plan view, the first intersection guide portion is closer to the workbench than the mounting surface (Figs. 1, 2).
(Claim 3) The lower wall has a protruding portion (11) that protrudes toward the workbench than the mounting surface (Fig. 2). The protruding portion is supported from below by the first intersection guide portion (11, 4), and an upper end thereof is inclined downward toward the workbench (Fig. 2).
(Claims 4-6) Nozawa discloses a machine tool including the column (A) as claimed (Figs. 1, 2).
(Claims 7-9) The machine tool of Nozawa has a horizontal spindle (or spindle extending horizontally) (Figs. 1, 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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, Singh Sunil 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.
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.
/RYAN RUFO/Primary Examiner, Art Unit 3722
1 It is worth noting that a portion is merely a part of a whole. The portions here may be arbitrarily chosen to meet the claim so long as each is of the intersection guide portion.
Prosecution Insights