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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 filed on 12/10/2025 has been entered.
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: a first scale removing unit, a machining unit, an accumulation place in claim 1.
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.
A first scale removing unit is interpreted as a blasting device according [0053] and a machining unit is interpreted as a laser machining device according to [0015].
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 1-11 and 13-14 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 limitation “an accumulation place” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure associated with the accumulation place that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 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(s) 1, 2, 7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huaguan et al. (CN107626767) of which attached English translation is cited in view of Araki et al. (JPH1158187) of which attached English translation is cited.
Regarding Claim 1, Huaguan teaches a forming system comprising:
a forming device (see Fig. 1) that forms a heated metal material (Fig. 1, 6) with a forming die (Fig. 1, 2) to produce a formed product (see Fig. 3) (page 2, lines 27-31);
a first scale removing unit that removes scales from a formed product removed from the forming die (page 3, line 8: surface shot blasting operation) and cools the formed product (The compressed air used during shot peening would cool the formed product as it blasts over the formed product.); and
a machining unit that machines the formed product prior to the formed product is scale-removed and cooled by the first scale removing unit (page 2, line 42: cutting, punching) (page 4, line 50, laser cutting).
Huaguan does not explicitly teach of the sequence of the scale-removing step followed by the machining steps and an accumulation place that accumulates the formed product from which the scales have been removed by the first scale removing unit before being machined by the machining unit.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform either the machining step or the removing-scale step first after the forming step as a resulting condition of the formed product would not depend on the sequence of the steps.
Araki teaches an accumulation place (Fig. 1, 1) that accumulates the formed product (Fig. 1, P) between the pre-processing station (Fig. 1, 3) and the post-processing station (Fig. 1, 4) ([0002], lines 1-11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an accumulation or buffer place between the first scale removing unit and the machining unit of Huaguan as taught by Araki in order to prevent a suspension of a processing station (e.g. the first scale removing unit) from stopping the entire production line as suggested in [0002], lines 1-11.
Regarding Claim 2, Huaguan/Araki teach the forming system according to claim 1,
wherein the forming device (Huaguan see Fig. 1) includes
a fluid supply unit (Huaguan Fig. 1, 4 & 9) that supplies a fluid (Huaguan Fig. 1, 5) to a metal pipe material (Huaguan Fig. 1, 6) as the metal material (Huaguan page 2, lines 32-36), and
a forming die (Huaguan Fig. 1, 2) that forms the formed product (see Huaguan Fig. 3) by bringing an expanded metal pipe material into contact with a forming surface (Huaguan Fig. 1, surface of the die (2)) (Huaguan page 2, lines 32-36).
Regarding Claim 7, although Huaguan/Araki do not explicitly teach a wall portion that partitions a space between the forming device and the first scale removing unit or a wall portion that partitions a space between the machining unit and the first scale removing unit is further provided, examiner takes official notice that it is old and well known in the art to place a partition wall between two neighboring machineries or between two workstations. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a wall portion between the forming device of and the first scale removing unit and/or between the first scale removing unit and the machining unit in order to define a separate physical working zone for each machinery/process, avoid any interference between the two machineries/processes in two different zones and enhance safety by creating a physical barrier between the machineries and workers.
Regarding Claim 13, Huaguan/Araki teach the forming system according to claim 1,
wherein the machining unit is configured to:
machine the formed product with a laser (Huaguan page 2, line 42: cutting, punching) (Huaguan page 4, line 50, laser cutting).
Although Huaguan/Araki do not explicitly teach cut a gradual change portion of the formed product with the laser, the gradual change portion being provided between a held portion and a formed body portion of the formed product, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention cut two opposite ends of the pipe blank after the forming step as the ends of the pipe blank do not participate in forming of the formed product.
Furthermore, examiner notes that the claim language such as “configured to machine … and cut …” is a statement of intended use. 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. In this case, the structure of the laser cutting device of Huaguan is clearly capable of performing the intended use. (see MPEP 2114)
Claim(s) 3-5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huaguan et al. (CN107626767) of which attached English translation is cited in view of Araki et al. (JPH1158187) of which attached English translation is cited, as applied to Claim 1, and further in view of Ruan (CN108262693) of which the attached corresponding English translation is cited.
Regarding Claim 3, Huaguan/Araki teach the forming system according to claim 1, however, do not explicitly teach wherein the first scale removing unit includes
a nozzle that jets particles to the formed product,
an installation portion that installs the formed product at a position facing the nozzle, and
a blockade wall that is disposed to surround peripheries of the installation portion and the nozzle and that blocks the particles.
Ruan teaches the first scale removing unit (see Fig. 1) includes
a nozzle (Fig. 1, 11) that jets particles to the formed product (page 1, Description: products) (page 1, Description lines 5-8) (page 3, line 10: spraying sand process),
an installation portion (Fig. 1, 3 & 12) that installs the formed product at a position facing the nozzle (Fig. 1, 11), and
a blockade wall (Fig. 1, 1) that is disposed to surround peripheries of the installation portion (Fig. 1, 3 & 12) and the nozzle (Fig. 1, 11) and that blocks the particles.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to clean the outer surface of the formed product of Huaguan using a scale removing unit of Ruan since it can improve the uniformity of polishing, shorten the overall polishing time and improve the overall polishing efficiency as suggested in Ruan page 2, lines 5-7.
Regarding Claim 4, Huaguan/Araki/Ruan teach the forming system according to claim 3, wherein the installation portion (Ruan Fig. 1, 3 & 12) suspends the formed product (Huaguan see Fig. 3) and installs the formed product in a posture that extends in a vertical direction (Ruan [0030]: hang the metal parts on the hanging rod 12) (Since the metal parts are hung on the hanging rods, the formed product of Huaguan hanging on the hanging rod 12 of Ruan would be positioned in a vertical direction due to gravity).
Regarding Claim 5, Huaguan/Araki/Ruan teach the forming system according to claim 4, wherein the nozzle (Ruan Fig. 1, 11) includes a jetting port that is disposed to face an outer peripheral surface of the formed product (Ruan Fig. 1 shows the multiple sand spraying opening (11) pointing at the hanging rods (12). Therefore, the jetting port on the nozzle would face an outer peripheral surface of the formed product when the formed product is hanging on the hanging rod (12)).
Regarding Claim 14, Huaguan/Araki/Ruan teach the forming system according to claim 3,
wherein the first scale removing unit (Ruan see Fig. 1) is configured to perform air blowing to the formed product with the jetting of the particles (A sanding blasting process typically involves blowing of air with the jetting of the particles (e.g. sand).).
Furthermore, examiner notes that the claim language such as “configured to perform” is a statement of intended use. 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. In this case, the structure of the scale removing device of Ruan is clearly capable of performing the intended use. (see MPEP 2114)
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huaguan et al. (CN107626767) of which attached English translation is cited in view of Araki et al. (JPH1158187) of which attached English translation is cited and further in view of Ruan (CN108262693) of which the attached corresponding English translation is cited, as applied to Claim 5, and further in view of Murata (JP2006300404) of which the attached corresponding English translation is cited.
Regarding Claim 6, Huaguan/Araki/Ruan teach the forming system according to claim 5, but, do not explicitly teach wherein the nozzle jets dry ice as the particles.
Murata teaches a scale removal method by spraying dry ice as the particles (Murata page 4, lines 36-37: dry ice).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use dry ice as particle in the blasting method of Ruan to remove the scale on the formed product of Ruan as taught by Murata since dry ice does not require disposing of blast particles from the formed product as cleaning as suggested in Murata page 4, line 45-46. As a result of using dry ice as blast particles, the formed product would be cooled by the dry ice.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huaguan et al. (CN107626767) of which attached English translation is cited in view of Araki et al. (JPH1158187) of which attached English translation is cited, as applied to Claim 1, and further in view of Kipp (EP1035947) of which the attached corresponding English translation is cited.
Regarding Claim 8, Huaguan/Araki teach the forming system according to claim 1, but do not explicitly teach further comprising:
a second scale removing unit that removes the scales from the formed product machined by the machining unit.
Kipp teaches a second scale removing unit (Fig. 1, 10, 12 & 14) that removes the scales from the formed product (Fig. 1, 20). (page 1, Description line 18: thorough cleaning of the inner surfaces of pipes)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to clean the inside of the formed product (pipe) of Huaguan by blasting dry ice as particles as taught by Kipp in addition to cleaning the outside of the formed product, such that, the entire surface including inside and outside of the formed product can be cleaned without having to dispose any blasting particles.
Regarding Claim 9, although Huaguan/Araki/Kipp do not explicitly teach that the first scale removing unit and the second scale removing unit are constituted by a common device, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the cleaning process of outside and insider of the formed product using the blasting devices of Huaguan and Kipp respectively in a common device in order to save cost by reducing the number of devices (e.g. chambers & air compressor) and time by performing both cleaning processes at the same time.
Regarding Claim 10, Huaguan/Araki/Kipp teach the forming system according to claim 8, wherein the second scale removing unit (Kipp Fig. 1, 10, 12 & 14) includes a blast hose (Kipp Fig. 1, 12 & 14) that jets particles onto an inner peripheral surface of the formed product (Huaguan Fig. 3) (Kipp page 2, lines 16-19).
Regarding Claim 11, Huaguan/Araki/Kipp teach the forming system according to claim 10, wherein the blast hose jets dry ice (Kipp page 2, line 17: dry ice) as the particles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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/JUN S YOO/Primary Examiner, Art Unit 3726 1/31/2026