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 . This office action is in response to the amendment filed on 11/26/2025 in which claims 1, 4-7, 9-16 are pending and claims 1, 6, 12, 14 are currently amended and claim 16 is new.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-7, 9-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “wherein the certain depth of the coupling hole is less than the certain height of the gap.” It is not clear if this actual relationship exists. First, the specification details a coupling hole, both in the embodiment of Figure 2 and Figure 3. It appears that the hole has a first recessed portion and a second thinner cylindrical portion that extends from the first recessed portion. In Figure 2, the coupling hole 43, is pointing to the elongated thinner cylindrical portion and in Figure 3, the coupling hole 43 is pointing to the recessed portion of the hole.
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It is therefore unclear whether the coupling hole 43 is defining both the recessed portion per Figure 3 and the second thinner portion of Figure 2, such that 43 represents the entire “T” shaped hole and its end placement is not indicative of only one of two areas, or alternatively, per the embodiment of Figure 3, only the recessed portion is being considered the coupling hole.
Secondly, even if only the recessed portion is being considered the coupling hole, actual height of the recessed area and the actual height of the gap cannot be ascertained from just the Figures.
The original disclosure sets forth “Thus, in the block 40, an included angle α is formed at a point where a virtual line extending from the inclined surface 41 meets a virtual line extending from the opposite surface. In the embodiment, the included angle α ranges from 0.5° to 2°. For reference, although the included angle α is exaggeratedly illustrated in FIGS. 2 and 3 so as to clearly show a state in which the inclined surface 41 is formed, it is desirable that the actual included angle α ranges from 0.5° to 2°, and it is desirable that the included angle α does not exceed 20° as much as possible.”
The included angle between the surface 31 and the surface 41 is set to be 0.5-2 degrees, but the Figure is drawn having an angle around 20 degrees. If the angle of the surface is exaggeratedly illustrated, then the entire proportion of the block is not accurately displayed and the Figures cannot be utilized to establish comparative distances.
In regards to claim 6, it is also not clearly established that if the recessed portion of 43 is the coupling hole, that the recessed portion has a female screw thread, and not the thinner cylindrical area extending from the recessed portion.
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, 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, 5-9, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Pignon (EP0446536) in view of Rogers et al. (U.S. Patent 7,779,665), herein referred to as Rogers and Abe et al. (U.S. Patent 12,031,577), herein referred to as Abe.
In regards to claim 1, Pignon discloses a notching apparatus in which a punch (4) descends to notch an electrode (not claimed subject matter), the notching apparatus comprising: a holder (6) having one surface (e.g. top surface) in which a mounting groove (b) is provided; the punch (4) having one end inserted into the mounting groove (b; fig. 2/3); and a block (1) inserted into the mounting groove (b) together with the punch (4), wherein, when inserted into the mounting groove (b), the block (1) presses the punch (4) so that the punch comes into close contact with one of inner surfaces of the mounting groove (near a).;
wherein the inner surface of the mounting groove (b) comprises a first inner surface (near the punch 4; annotated below) perpendicular to a bottom surface of the holder and a second inner surface (fixed corner 2 or as integral with holder 6; per Figure 3) inclined with respect to the bottom surface of the holder, and the block (1) enters in contact with the second inner surface (fixed corner 2 or as integral with holder 6; per Figure 3) to press the punch toward the first inner surface;
wherein, a portion of the block (1), which is in contact with the second inner surface (fixed corner 2 or as integral with holder 6; per Figure 3), is provided as an inclined surface (annotated below),
wherein another portion of the block which is in contact with the punch is provided with a vertical surface (vertical surface of 1),
wherein when the inclined surface of the block (inclined surface of 1 ) comes into contact with the second inner surface of the mounting groove (fixed corner 2 or as integral with holder 6; per Figure 3) , the vertical surface of the block (surface facing the punch of 1) is parallel to an outer surface of the punch to come into contact with the outer surface of the punch (4; as shown in Figure 2 and 3),
wherein the inclined surface of the block (inclined surface of 1) and the second inner surface of the mounting groove (inclined surface of holder 2 or 6) have directly formed uneven surfaces facing each other and the vertical surface of the block (surface of 1 facing the punch) and the outer surface of the punch (4) in contact with the vertical surface have smooth surfaces that face each other, and wherein friction force between the second inner surface and the block is greater than that between the block and the punch.
Wherein the block includes a coupling hole (annotated below) that extends from a top surface of the block (1) to a certain depth into the block, wherein the block (1) inserted into the mounting groove together with the punch (4) forms a gap (annoted below) having a certain height between a bottom surface of the block and a bottom surface of the mounting groove, wherein the certain depth of the coupling hole is less than the certain height of the gap.
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Pignon discloses the claimed invention except for the highlighted recitations such that Pignon does not disclose wherein the inclined surface of the block and the second inner surface of the mounting groove have directly formed even surfaces and that the friction force between the second inner surface and the block is greater than that between the block and the punch. Pignon does disclose that when the screw 5 is screwed into the support block 7, that the inclined surface of the wedge 1 against the inclined surface of the support 6 causes movement towards the punch/element 4, such that the punch/element 4 is locked by pinching in the same manner as the instant invention. It is also noted that directly formed encompasses such constructions such as a coating.
Attention is first directed to the Rogers wedge adapted to lock a punch in a retainer block in which the tool can be accurately positioned relative to the retainer block utilizing angled surfaces. Rogers discloses that:
“In the present embodiments, coating may be provided on one or more of the following surfaces: (1) the locking bar's bottom wall 73, which preferably is adapted to slide along the die holder's base 62 during clamping and unclamping; (2) an upwardly-facing surface 63 of the die holder's base; (3) one or each of the die holder's upwardly-facing loading surfaces 66, 76, along which loading surfaces 21 of certain types of dies D are adapted to slide (e.g., during positioning of the die when the die holder is unclamped).
In certain embodiments, the clamping wall 75 of the locking bar 70 is defined by uncoated metal. Additionally, or alternatively, the die holder's second clamping wall 65 can be defined by uncoated metal. Such uncoated clamping wall features can be provided to reduce the likelihood of any slippage between the die's tang and the die holder's clamping walls. It is contemplated, though, that some embodiments may involve coatings on the clamping walls, perhaps high-friction-coefficient coatings that facilitate clamping” (col. 19, lines 43-53).
“In some cases, the coating comprises a nitride and/or a carbide. One commercially available nitride coating is the Nitrex.RTM. coating, which is a high endurance surface enhancement available commercially from Nitrex, Inc. (Aurora, Ill., USA). Particularly useful nitriding and nitrocarburizing enhancements are described in U.S. Pat. No. 6,327,884, the salient teachings of which are incorporated herein by reference…. The term coating includes discrete coatings on the surface of a part, diffusion of material into the part so as to enhance its surface, etc.” (col. 20, lines 3-43).
Therefore as at least established by Rogers to that when the punch is formed of metal, to provide a high friction coating on one or more of the clamping walls to facilitate clamping of the punch. Rogers discloses that this coating can be applied by Nitriding or nitrocarburizing and that the coating can be applied to the surface or diffused into the material of the part. Thereby it is understood that these processes form a surface or imbedded property to the material that increases its coefficient of friction. To the extent that it can be argued that this does not necessarily impart that the surface roughness or irregularities are being imparted to the surface to increase frictional resistance of the surface, attention is also directed to Abe. Abe discloses a means of making a crankshaft. Abe states that a nitriding process can be used to improve the wear resistance or fatigue strength of the crankshaft. However,
“Generally, a nitriding process disadvantageously increases the surface roughness by about 1.5 to 2 times (Dieter Liedtke et al., “Nitriding and Nitrocarburizing on Iron Materials”, AGNE Gijutsu Center Inc., p. 72, 2011)” (col. 4, lines 6-9).
Rogers discloses that higher friction coatings, applied by a nitriding process, that are either embedded in or attached to the surface can be utilized to increase the friction between the clamped surfaces to prevent the likelihood of slippage. Abe sets forth that it is known that the nitriding process will also increase the surface roughness. Thus, it would be understood to one of ordinary skill in the art that the process of imparting the Rodgers nitriding process to the clamping surfaces would also increase the surface roughness providing an uneven surface of those surfaces as evidenced by Abe. It would have been obvious to one having ordinary skill in the art to have modified the second inner surface of the mounting groove and the inclined surface of the block of Pignon as demonstrated by Rodgers and that would also increase their surface roughness as evidenced by Abe by applying a nitriding process to their surfaces thereby increasing their frictional properties to facility to reduce slippage and improve contact between the surfaces.
It would be understood that providing a roughened surface on the inclined surface of the block and its mating inclined surface would increase the coefficient of friction and thus the friction force between the second inner surface and the block, such that the friction force between the second inner surface and the block was greater than the friction force between the block and punch. To the extent that it can be argued that it would not positively be a greater force than that between the block and the punch, it is noted that as claimed, there is no difference between the modified device of Pignon and the instant invention. Moreover, Pignon also desires a removable punch that can be secured from movement by utilizing wedges. The difference between the friction force between the two sets of mating surfaces has only three options, either the friction force between the second inner surface and the block is greater than, less than or equal to the friction force between the block and punch. “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007). Therefore, it would have been obvious to have provided a high friction coating on the second inner surface and the block that provided for a greater friction force between the second inner surface and the block than between the block and punch to have maintained the retention of the punch during operation of the tool.
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The modified device of Pignon still does not disclose that the depth of the coupling hole is less than the height of the gap. The coupling hole of Pignon is a countersink hole configured to support the head of the screw. Thus, the depth of the coupling hole from the top of the block is determined by the length and configuration of the screw used. The height of the gap between the bottom surface of the block and the bottom surface of the mounting groove is a determined by spatial constraints within the mounting groove required for accommodating the punch and associated structures. For example, a wider punch or wider block would limit the extent to which the block could descend into the groove, thereby increasing or decreasing the distance between the bottom surface of the block and the bottom surface of the mounting groove. As both the depth of the countersunk hole and the height of the gap are results effective variables, it would have been obvious to one of ordinary skill in the art to select dimensions such that the depth of the coupling hole is less than the height of the gap, as this merely involves routine optimization of known variables to achieve a predictable arrangement. The fact that Pignone does not explicitly recognize the relationship between the depth of the coupling hole and the height of the gap does not render the claimed relationship non-obvious as discovering the optimum or workable ranges of results effective variables is ordinarily within the skill of the art. See In re Aller, 220 F.2d 454 (CCPA1955) MPEP 2144.05
In regards to claim 5, the modified device of Pignon discloses wherein friction force between the block (1) and the second inner surface (inclined surface annotated above) is greater than that between the punch (4) and the first inner surface (as modified by Rogers and Abe).
In regards to claim 6, the modified device of Pignon discloses, wherein a female screw thread is provided on an inner circumferential surface of the coupling hole (that mates with the threads of screw 5).
In regards to claim 7, the modified device of Pignon discloses wherein the block is made of a metal material having a friction coefficient greater than that of the punch.
“In certain embodiments, the clamping wall 75 of the locking bar 70 is defined by uncoated metal. Additionally, or alternatively, the die holder's second clamping wall 65 can be defined by uncoated metal. Such uncoated clamping wall features can be provided to reduce the likelihood of any slippage between the die's tang and the die holder's clamping walls. It is contemplated, though, that some embodiments may involve coatings on the clamping walls, perhaps high-friction-coefficient coatings that facilitate clamping” (Rogers col. 19, lines 43-53).
In regards to claim 9, the modified device of Pignon discloses wherein a surface between the second inner surface (inclined surface) and the block (1) is rougher than that between the block and the punch to increase in friction force (modified with high friction coating per Rogers).
In regards to claim 11, the modified device of Pignon discloses an electrode notched by the notching apparatus of claim 1 (e.g. any workpiece that is used by Pignon as the preamble does not impart any structure to the workpiece).
In regards to claim 13, the modified device of Pignon discloses wherein the first inner surface and the second inner surface of the mounting groove are surfaces of the holder (6) that define the mounting groove (as annotated above).
In regards to claim 14, the modified device of Pignon discloses wherein a top surface of the block (1) is positioned higher than the one surface of the holder (6) when the block is inserted into the mounting groove together with the punch (per the orientation of Figure 1, wherein the punch extends upwardly. (see dashed arrow)
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In regards to claim 15, the modified device of Pignon discloses wherein a topmost portion of the inclined surface of the block (inclined surface of 1) is located higher than a topmost portion of the second inner surface of the mounting groove (inclined surface of holder 2 or 6; see dashed arrow above) when the block (1) is inserted into the mounting groove together with the punch (4).
In regards to claim 16, the modified device of Pignon discloses wherein the block further includes a through hole (9; for the shaft of the screw) that extends from the coupling hole to the bottom surface of the block) and wherein a length of the through hole (for the shaft of the screw 5) is greater than the certain depth of the coupling hole (countersink hole for the screw head)
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, 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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Pignon (EP0446536) in view of Rogers et al. (U.S. Patent 7,779,665), herein referred to as Rogers , Abe et al. (U.S. Patent 12,031,577), herein referred to as Abe and in further view of Janek, Jr. (U.S. Patent 6,669,399), herein referred to as Janek.
In regards to claim 4, Pignon discloses wherein, in the block, an angle at a point where a virtual line extending from the inclined surface meets a virtual line extending from the opposite surface but does not disclose that it ranges from 0.5° to 2°. Attention is further directed to the Janek wedge adapted to lock a punch in a retainer block in which the tool can be accurately positioned relative to the retainer block utilizing angled surfaces. Janek discloses that the relative angle is in the range of 1 to 45 degrees to provide an adequate wedging function. It would have been obvious to one having ordinary skill in the art to have provided the inclined surface of Pignon at an angle of 1 to 45 degrees as set forth by Janek in determining the desired angle for the given application.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Pignon (EP0446536) in view of Rogers et al. (U.S. Patent 7,779,665), herein referred to as Rogers , Abe et al. (U.S. Patent 12,031,577), herein referred to as Abe and in further view of Janek, Jr. (U.S. Patent 6,669,399), herein referred to as Janek.In regards to claim 10, Pignon discloses, the claimed invention except wherein the block is made of the same metal material as the holder. Attention is further directed to the Janek wedge adapted to lock a punch in a retainer block in which the tool can be accurately positioned relative to the retainer block utilizing angled surfaces. Janek discloses that both the punch and the block can both be formed from hardened steel or other metals. As Pignon is silent as to the materials of the punch and block and as demonstrated by Janek to be known to form them both of hardened steel, it would have been obvious to one having ordinary skill in the art to have utilized the teachings of Janek to form both the block and punch of Pignon of hardened steel, as it is a well-known, easily workable and producible material, with shown usability for the environment.
Claim 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Pignon (EP0446536) in view of Rogers et al. (U.S. Patent 7,779,665), herein referred to as Rogers and in further view of Abe et al. (U.S. Patent 12,031,577), herein referred to as Abe. Pignon discloses that many workpieces can be notched utilizing the punching apparatus but does not specifically mention electrodes or stacking the electrodes. However, the manner of punching as set forth in claim 1 is already set forth in the art, based upon the teachings of Pignon. Accordingly, one of ordinary skill in the art would have been capable of applying this known “improvement” technique in the same manner to the prior art electrodes or other workpiece, in the same manner and the results would have been predictable to one of ordinary skill in the art, namely one skilled in the art would have readily recognized that the punch would function in the same manner for a variety of workpieces in that any discrepancies in the needed punch size could be handled with a scaling up or down of the punch cross-section. Moreover, stacking of the electrodes or other workpieces could be accomplished by hand.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The Applicant has amended claim 1 to recite that “the certain height of the coupling hole is less than the certain height of the gap”. Applicant contends that the claimed relationship between the depth of the coupling hold and the depth of the gap are not taught by Pignon. It is first noted that the Applicant does not appear to have support for these limitations from their original disclosure as discussed in the rejection under 35 U.S.C. 112(a). Accordingly, whether Pignone expressly teaches this relationship is not determinative.
Moreover, the difference between Pignon and the claimed invention amounts to a change in size between two results effective variables. The relative dimensions of width of the block and punch determine the extent to which the block may descend into the mounting groove and therefore affect the positioning and accommodation of the punch within the assembly. Selecting dimensions such that the depth of the coupling hole is less than the height of the gap would therefore have been an obvious matter of routine design choice and dimensional optimization, the optimization of which would have been within the routine skill of the art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA M LEE whose telephone number is (571)272-8339. The examiner can normally be reached M-F 8a.m.- 5p.m..
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/LAURA M LEE/Primary Examiner, Art Unit 3724