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 .
Examiner’s Notes
Examiner Ramos has been assigned to act on the present application which has received actions on merit by Examiner Trujillo, who is no longer at the Office. Accordingly, Examiner Ramos will continue with the entire prosecution of this application.
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 “fins are distributed radially at an identical angle” as in claim 3 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 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: “spring element” in claim 1 and “holder element” in claim 8.
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 9 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. The limitations “a deformability of each of the fins also enables a diagonal arrangement of the stop relative to the longitudinal axis of the flex adapter” on lines 3-4 of claim 9, have not been described in the specification as filed. The specification as filed is silent as to any deformability of each of the fins enabling a diagonal of the stop relative to the longitudinal axis of the flex adapter.
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, 11-12 and 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 in line 8 “wherein each of the at least two fins from a spring element which is closed”, which renders the claim indefinite. It is unclear how exactly each of the at least two fins “form a spring element which is closed”. Closed how? Further clarification is needed.
Claim 1 recites in lines 9-10 “the extent of the respective variable wall thickness of the corresponding pipe dimension of standardize pipe diameters” which renders the claim indefinite. It is unclear what exactly is the extent of the respective variable wall thickness of the corresponding “pipe dimension of standardize pipe diameters”. Further clarification is needed.
Claim 2 recites in line 1 “comprising at least three”. However, it is unclear what exactly comprises “at least three”. Further clarification is needed.
Claim 9 recites in lines 3-4 “a deformability of each of the fins also enables a diagonal arrangement of the stop relative to the longitudinal axis of the flex adapter”. The way these limitations have been set forth renders the claim indefinite. What exactly delimits this “diagonal arrangement”? Further clarification is needed.
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.
Claim(s) 1-3, 6-7, 9 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 3 456 448 (hereafter—EP’448--).
In regards to claim 1, EP’448 discloses (in Figures 1-7) a flex adapter (6) for a stripping tool for treating plastic pipes or pipes coated with plastic, comprising: a base body (refer to the body of adapter 6); at least two fins (13), arranged along the outer contour of the base body (see Figures 1-6); at least one respective stop (refer to stop flanged contact surface 14) arranged radially outside on the at least two fins (see Figures 1-6); and a plurality of tensioning elements (17), that are arranged integrally on a front region of the base body (see Figures 1-7); wherein each of the at least two fins (13) form a spring element which is closed, providing a radial spring deflection path (radially inwardly/outwardly) in the extent of the respective variable wall thickness of the corresponding pipe dimension of standardized pipe diameters. Regarding the intended use limitations “providing a radial spring deflection path in the extent of the respective variable wall thickness of the corresponding pipe dimension of standardized pipe diameters” it is noted that the prior art used in the rejection is capable of being used for this function. A claim containing a “recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations”, if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. The flex adapter 6 of EP’448 is provides a radial spring deflection path (radially inwardly/outwardly), due to the resilience of spring element formed by fins 13 in the extent of the respective variable wall thickness of the corresponding pipe dimension of standardized pipe diameters.
In regards to claim 2, EP’448 discloses the flex adapter according to claim 1, EP’448 also discloses at least three (in view of the 112 above, note that there are 6 fins 13, meeting the “at least three” claimed limitation).
In regards to claim 3, EP’448 discloses the flex adapter according to claim 1, EP’448 also discloses that the fins (13) are distributed radially at an identical angle over the circumference of a rear region of the base body (in the same way as presented by Applicant’s identical angle, see Figures 1-7 of EP’448).
In regards to claim 6, EP’448 discloses the flex adapter according to claim 1, EP’448 also discloses that at least one fin, has a deformability in the radial direction that is higher than a deformability in other directions (since fins 13 deflect radially more than they do in other directions based on configuration of spring elements being that 13 is at the end of the lever arm created by 17 and given the circular form of the device is unlikely to deform laterally more readily than radially).
In regards to claim 7, EP’448 discloses the flex adapter according to claim 1, EP’448 also discloses that at least one fin, has a different flexibility than one of a plurality of tensioning elements (as in Figure 4, fins 13 have a different flexibility than the much thinner spring elements 16).
In regards to claim 9, EP’448 discloses the flex adapter according to claim 1, EP’448 also discloses that a deformability of at least one fin, also enables a diagonal arrangement of the stop relative to the longitudinal axis of the flex adapter (as in Figure 4, fins 13 can move side to side in relation to each other along spring elements 17 and radially towards and away from the center, the combination of these movements would constitute a diagonal movement) and a deformability of each of the fins also enables a diagonal arrangement of the stop relative to the longitudinal axis of the flex adapter (as in Figure 4, since the stop 14 is on fins 13, any radial movement of the fins will enable a diagonal movement of the stop and as consequence a diagonal arrangement of the stop relative to the longitudinal axis of the flex adapter).
In regards to claim 11, EP’448 discloses the flex adapter according to claim 1, EP’448 also discloses three to six fins (note that there are 6 fins 13, meeting the “three to six fins” claimed limitation).
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(s) 5, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 456 448 (hereafter—EP’448--) in view of CN 109047806 (hereafter—CN’806--).
In regards to claims 5, 12 and 13, EP’448 discloses the flex adapter according to claim 1, EP’448 also discloses the at least one fin (13) having an axial dimension.
However, EP’448 fails to disclose that the axial dimension of the at least one fin is in the range from 2mm to 40mm, or in which each of the at least two fins has an axial dimension in the range from 2mm to 40mm (claim 5); in the range from 2mm to 20mm, or in which each of the at least two fins has an axial dimension in the range from 2mm to 20mm (claim 12); and in the range from 2mm to 10mm or in which each of the at least two fins has an axial dimension in the range from 2mm to 10mm (claim 13).
However, CN’806 teaches in Figures 4 and 8, that it is well known in the art to have a flex adapter (2) that includes fins (202) having an axial dimension. As per translation, the axial dimension of the fins is in the range of 1.8-3.0 mm. A person having ordinary skill in the art would have recognized that the extent of the axial dimension of the fins will depend on the size/dimensions of the device they are being applied to.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the axial dimensions of the fins of EP’448 to be in the range from 2mm to 40mm, or in which each of the at least two fins has an axial dimension in the range from 2mm to 40mm (claim 5); in the range from 2mm to 20mm, or in which each of the at least two fins has an axial dimension in the range from 2mm to 20mm (claim 12); and in the range from 2mm to 10mm or in which each of the at least two fins has an axial dimension in the range from 2mm to 10mm (claim 13), based on the teachings of CN’806 since as per MPEP section 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range). The dimensions will depend upon the dimensions of the device they are being applied to.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 456 448 (hereafter—EP’448--) in view of WO 2010/025881 (hereafter—WO’881--).
In regards to claim 8, EP’448 discloses the flex adapter according to claim 1, however, fails to disclose a respective holder element integrally arranged with the stop.
WO’881 teaches (in Figure 4) that it is well known in the art to have a flex adapter with a holder element integrally arranged with the stop (39). WO’881 teaches in Figure 1, that the holder element allows the device to grip the flex adapter (4) and per translation, prevents the flex adapter from moving too far into a bore it is inserted into.
Accordingly, it would have been obvious to a person having ordinary skill in the art at the time Applicant’s invention was filed to modify EP’448’s flex adapter with a respective holder element arranged with the stop, based on the teachings of WO’881 to grip the flex adapter and prevent the flex adapter from moving too far.
Response to Arguments
Applicant's arguments filed 05/21/2026 have been fully considered but they are not persuasive.
Applicant argues on page 7 regarding the WO’881 reference that “segment element 13 are not spring elements which are closed but are segments only. Although this argument is not necessarily clear, the Examiner notes that fins 13 are resilient and move radially inwardly/outwardly which as such, form a spring element which as a whole form a closed loop as seen on Figure 5 of WO’881. Thus, the Examiner’s interpretation is not precluded.
In response to applicant's argument on page 7, that the teachings of WO’881 “are not concerned with the problem of inserting the flex adapter to the differing wall thicknesses of a standardized pipe but is concerned with load reduction”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. A claim containing a “recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations”, if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) See MPEP 2114. The flex adapter 6 of EP’448 is provides a radial spring deflection path (radially inwardly/outwardly), due to the resilience of spring element formed by fins 13 in the extent of the respective variable wall thickness of the corresponding pipe dimension of standardized pipe diameters.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICOLE N RAMOS whose telephone number is (571)272-5134. The examiner can normally be reached Mon-Thu 7:00 am -5:00 pm.
Examiner interviews are available via telephone, 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, Sunil K Singh 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.
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/NICOLE N RAMOS/Primary Examiner, Art Unit 3722
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