DETAILED CORRESPONDENCE
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission has been entered.
Allowable Subject Matter
Claim 2, 6, 11 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.
Response to Arguments
Applicant's arguments have been fully considered.
Applicant argues that “Scholze concerns a system for measuring misalignment of press parts in a press device by doing a measurement on the guiding means thereof. Scholze is not concerned with measuring strain of an apparatus part as induced by force exerted on a component that is processed in the press device, as recited in claim 1. Actually, in the press device of Scholze, the measurement system of Scholze would not measure any strain when the press parts are properly aligned while the press parts exert force in the component that is processed.”
Examiner does not find this persuasive because the structure of Scholze meets the claim by teaching the same structure. Applicant should explain, preferably by illustration, how the claimed structure is different. The discussion of how Scholze operates is appreciated, but it is unclear which particular structure applicant has that Scholze doesn’t.
Applicant argues that “Even if the skilled person would consider Scholze, its disclosure would teach away from the present invention since the Scholze device generally (when having proper alignment) would not give a strain measurement when force is exerted on the component, or could give a strain measurement while no force is exerted on the component to be processed. Even when there would be a strain measurement and exertion of force on the component, the strain measurement would not be an actual and reliable indication of pressure conditions of the component processed.”
Examiner does not find this persuasive because the structure of Scholze meets the claim by teaching the same structure. Applicant should explain, preferably by illustration, how the claimed structure is different. The discussion of how Scholze operates is appreciated, but it is unclear which particular structure applicant has that Scholze doesn’t.
Schloze shows the same structure as claimed. The difference between Schloze and the claim is the component holding element. Schloze is a device for working on component. Holding a component when it is being processed is obvious.
Even if Schloze is concerned with alignment and the claim is concerned with part deformation, the claimed structure is nonetheless met by Schloze. Applicant must claim a structure that is different from the prior art to overcome the prior art in a claim to a structure.
Furthermore, Schloze understands strain translate to the part as evidenced by EP1980339A1 which is cited in Schloze in their background section. See, e.g., “Occurrence of a tool strain reduces the dimensional accuracy of a formed product. The deformation amount and deformation distribution of the formed product due to a tool strain change in accordance with the stamping force by the press machine, reaction force by the material to be worked deformation resistance and the like. Therefore, the tool strain changes due to change of the various conditions such as the press machine, tool shape, quality of the material to be worked, shape of the material to be worked, lubrication and stamping force, and the change of the tool strain causes quality scatter between the stamp parts. In the forming prediction by the finite element method or the like cannot take the tool strain into consideration due to the calculation ability and the like, and therefore, the tool strain makes the prediction of forming by the finite element method difficult.” at paragraph 5 of EP1980339A1.
Applicant argues that “Scholze discloses deforming components, while the present invention intends to maintain quality during processing. Therefore, Scholze effectively teaches away from the present invention.”
Examiner does not find this persuasive because the structure of Scholze meets the claim by teaching the same structure. Applicant should explain, preferably by illustration, how the claimed structure is different. The discussion of how Scholze operates is appreciated, but it is unclear which particular structure applicant has that Scholze doesn’t.
Applicant argues “Scholze discloses a number of sensors that might be employed for measuring strain. However, claim 1 of the present invention is specifically directed to only an FBG sensor as the present invention recognizes the specific advantages of an FBG sensor for the technological field of the invention. Scholze does not disclose nor hint at the specific advantages of an FBG sensor for such technological field, nor is Scholze concerned with such technological field.”
Examiner does not find this persuasive. Scholze discloses an FBG sensor in a structure that is the same as the claimed structure.
Applicant argues that “the amendment creates a structural-functional relationship, namely mechanical attachment of the FBG sensor to an apparatus part with the express function of real-time pressure monitoring of processed components, that is absent in Scholze”
Examiner does not find this persuasive. The amendment is an intended use. What is the different structure? How is a FBG configured to …. different than a FBG? Based on the present disclosure it is unclear what the answer to this question is.
Applciant argues that “Scholze does not disclose to have a sensor, or even an FBG sensor, attached by a pressureless sintering process”
Examiner does not find this persuasive. Process limitations in a system claim have limited weight. Applicant should explain how the structure is different.
Applicant argues that “the applied reference fails to disclose a groove at a side of the respective apparatus part as the channel in which the FBG sensor is provided”
Examiner does not find this persuasive. Scholze explains that “measuring means 20 is configured to be inserted into the longitudinal bore 14 of the guide pillar 10 and to be fixedly mounted to the end regions of the guide pillar 10 by holding elements”. Fig 1 of Scholze shows the bore 14 is on the left side of the apparatus.
Applicant argues that “Scholze only discloses that a sensor is located in the guiding means, but does not disclose that a sensor is located in a displaceable member exerting a force onto the component, or in a support part of a support for the components for a component holding position, nor is it obvious from Scholze to locate the FBG sensors in such parts.”
Examiner does not find this persuasive because “a sensor is located in a displaceable member” is not claimed and because the claim limitation “support part of a component holding tool part defining the at least one component holding position for holding a component” is not supported by the specification.
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.
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 limitation(s) is/are:
displaceable member
apparatus part
respective apparatus part
component holding tool part
pressure tool part
support part
Because this/these claim limitation(s) is/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 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.
Claim 10 is 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.
In reference to claim 10, the claim limitation “support part of a component holding tool part defining the at least one component holding position for holding a component” is not supported by the specification.
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.
Claim(s) 1-18 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 1, the claim limitation “respective apparatus part” lacks antecedent basis in the claim.
The claim limitation “each said component” lacks antecedent basis in the claim.
The claim is examined in view of the figures.
Note: Claims 2-18 are also rejected by virtue of their dependence on claim 1.
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.
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 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.
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.
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 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.
Claim 1, 3, 5-7,9, 12-15, and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scholze (US 20210101243 A1).
In reference to claim 1, Scholze discloses a component processing apparatus defining at least one component holding position for holding a component (“System for measuring misalignment of a tool (2) in a press device” [Abstract]) and the component processing apparatus comprising
at least one displaceable member associated with each said component holding position, each of said at least one displaceable member being configured and arranged to allow exerting force on a component the component held in the associated component holding position (“setting-up the tool 2 in the press device 1 parallelism of surface pairs and of supporting surfaces have to be carefully maintained. FIG. 1 shows the tool 2 further comprising a die 5, in particular a stamping tool or punch, guided in the die guide plated 9.” [P0046])
at least one apparatus part that is susceptible to strain induced by force, in use, exerted by the at least one displaceable member on the respective component(s) held in the component holding position(s), and that has a Fiber Bragg Grating, FBG, strain sensor, (“measuring means accommodated into the longitudinal bore of at least one guide pillar are configured as a fiber optic sensor” [P0023] and “Fiber Bragg Grating Technology to measure both strain and temperature,” [P0029])
wherein the FBG strain sensor is configured and arranged mechanically attached to the respective apparatus part to allow measuring strain of the respective apparatus part as induced by force, in use, exerted by the at least one displaceable member on the respective component(s). (“the measurement fiber, in mechanical contact with the pillar shaped structure itself. It is attached with its two ends and preferably pre-loaded between them. Alternatively, more than one measurement fiber can be provided. Due to bending of the measuring means by deformation of the pillar shaped structure the one measurement fiber is elongated” [P0025])
Scholze does not specify the component holding element, however, since Scholze discloses that the apparatus is form stamping, punching, and the like, it would be obvious that the apparatus comprises an element for holding as claimed.
In reference to claim 7, Scholze further discloses Fig 3, which shows that the measuring means can be located on the side of the apparatus.
In reference to claim 9-10, Scholze further discloses that the sensor is located in the guide means.
In reference to claim 12-15 and 17-18, Scholze further discloses that apparatus is for “Machining devices for stamping, pressing or molding comprise either a stamping tool, a pressing tool, an injection-molding tool or a die-casting tool. In general, the tool comprises a plurality of plates, known as well as tool halves, movable relative to another and made up of at least a first part and a second part, in particular a punching or blanking die or a mold.” (P0002)
“Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
In reference to claim 7, Scholze further discloses Fig 3, which shows that the measuring means can be located on the side of the apparatus.
Claim 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scholze (US 20210101243 A1) and further in view of Payer (US 20020043551 A1).
In reference to claim 3-4, Scholze discloses the optical fiber is attached to the part, but does not disclose that precious metal for bonding is used.
Scholze further discloses the “fiber, in mechanical contact with the pillar shaped structure itself. It is attached with its two ends” (P0025). The process of attaching is considered a process limitation in an apparatus claim.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, optical fiber processing, Payer discloses that the use of gold is known for bonding optical fibers (Claim 24).
The combination would be achievable by using gold to attach the FBG optical fiber as is required by Scholze.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the invention such that the apparatus part is coated with gold where the fiber is attached.
A person having ordinary skill in the art would have been specifically motivated to do so in order to combine prior art elements according to known methods to yield predictable results; use of known technique to improve similar devices (methods, or products) in the same way; or apply a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scholze (US 20210101243 A1) and further in view of Mishra (US 20040060965 A1).
In reference to claim 8, Scholze further discloses “measuring means accommodated into the longitudinal bore of at least one guide pillar are configured as a fiber optic sensor” (P0023).
Scholze does not disclose that the pillar comprises two halves in order to position the sensor in the bore.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, machining a channel, Mishra discloses that forming “channels formed by, for example, removal of material from mating halves of two piece metal body, which channels have a seam or interface where the halves mate” (P0032) was a known method of forming channels.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the invention such that the apparatus part comprises two sub apparatus parts having mutually abutting sides provided with matching said grooves providing the channel.
A person having ordinary skill in the art would have been specifically motivated to do so in order to combine prior art elements according to known methods to yield predictable results; use of known technique to improve similar devices (methods, or products) in the same way; or apply a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scholze (US 20210101243 A1) and further in view of Payer (US 20020043551 A1) and further in view of Mishra (US 20040060965 A1).
In reference to claim 5, Scholze further discloses “measuring means accommodated into the longitudinal bore of at least one guide pillar are configured as a fiber optic sensor” (P0023).
Scholze does not disclose that the pillar comprises two halves in order to position the sensor in a channel in the bore.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, machining a channel, Mishra discloses that forming “channels formed by, for example, removal of material from mating halves of two piece metal body, which channels have a seam or interface where the halves mate” (P0032) was a known method of forming channels.
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the invention such that the apparatus part comprises two sub apparatus parts having mutually abutting sides provided with matching said grooves providing the channel.
A person having ordinary skill in the art would have been specifically motivated to do so in order to combine prior art elements according to known methods to yield predictable results; use of known technique to improve similar devices (methods, or products) in the same way; or apply a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
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