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 .
Election/Restrictions
Applicant’s election without traverse of Species A in the reply filed on 12/03/25 is acknowledged.
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:
laser-sub-assembly: “each laser assembly 110 includes a laser source 112 operable to generate a laser beam 116 onto the external surface 104 through a suction tube 114.”, para. [0034]; “the suction tube 114 provides a vacuum suction channel (for example, fluidly coupled to a vacuum) that removes resulted gases and fine particles of the mill scale 118 during the laser ablation. Such gas or very fine particles are subsequently sucked out through the suction tube 114 and removed to a location for disposal. Turning to FIG. 2 , a schematic diagram of the suction tube 114 and laser beam 116 during operation is shown. Here, the laser beam 116 is applied to the exterior surface 104 of the tubular 102 to ablate the mill scale 118.”, para. [0036].
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 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 1-20 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.
With regard to claim 1, the limitation of “a tubular” is unclear – it is unclear whether the applicant is describing a structural surface of an element or instead intending to recite “a tube or cylinder”. Appropriate correction is required. Independent claim 11 includes the same limitation and is rejected for the same reason.
With regard to claim 1, the limitation “at a particular laser ablation threshold” is unclear with regard to the value of the claimed laser ablation threshold as the claim nor written description provides a standard for ascertaining the requisite degree and one of ordinary skill in the art would not be reasonably apprised of the invention. Independent claim 11 includes the same limitation and is rejected for the same reason.
The remaining claims are rejected for at least the reason of their direct and/or indirect dependency from either independent claim 1 or 11.
Allowable Subject Matter
Claims 1-20 would be allowable assuming the above definiteness rejections were overcome.
The prior art of record by itself or in combination does not disclose the structural and functional limitations as recited in the claims. Specifically, the prior art does not disclose a mill scale removal system comprising a first adjustable stand comprising at least one first vertical arm, at least one first horizontal arm coupled to the at least one first vertical arm, and at least one first roller coupled to the first horizontal arm and configured to partially support a tubular by contacting engagement with an inner radial surface at or near a first terminal end of the tubular; a second adjustable stand comprising at least one second vertical arm, at least one second horizontal arm coupled to the second vertical arm, and at least one second roller coupled to the second horizontal arm and configured to at least partially support the tubular by contacting engagement with the inner radial surface at or near a second terminal end of the tubular; a laser ablation system that includes at least one laser sub-assembly mounted to a rod and a first motor driveably coupled to the rod, the at least one laser sub-assembly comprising a laser source configured to output a laser having a laser intensity sufficient to remove at least one mill scale layer formed on the outer radial surface at a particular laser ablation threshold; and a rotation assembly comprising a second motor, a drive rod coupled to the second motor, and at least one rotation roller coupled to the drive rod and configured to contactingly engage the outer radial surface of the tubular, the second motor configured to driveably rotate the drive rod to facilitate rotation of the tubular about a centerline axis through rotation of the at least one rotation roller by the drive rod.as recited in Claim 1. Furthermore, as claim 11 is directed toward a method for removing mill scale from a tubular, and includes identical claim limitations to those of claim 1 except in method form, the comments presented over claim 1 are applicable here toward claim 11. Furthermore, with respect to the method step claimed, to the extent that the prior art apparatus meets the structural limitations of the apparatus as claimed, it will obviously perform the method steps as claimed. Additionally, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01(I)".
The closest prior art of record is McRaney (US 10780469), Danko et al. (US 20230228360), Ohnishi et al. (US 6375059), and Xinjiang (CN 213223625). While McRaney which is the closest prior art of record related to a system for laser treating a pipe surface does disclose a laser 114 for cleaning an external surface, McRaney utilizes a frame structure 106 with circumferential guide supports 122 which are designed to circumscribe an outer surface of the pipe, McRaney does not teach the claimed first adjustable stand, second adjustable stand, laser ablation system, and rotation assembly as detailed above. While Danko relates to a motorized apparatus for pipe inspection and repair; Ohnishi relates to a method for smoothing steel pipe seam portions, and Xinjiang relates to a removal device of iron oxide in a pipe, it is respectfully submitted that none of the aforementioned prior art citations remedy the aforementioned deficiencies of the closest prior art citation (MCRaney). Since none of the prior art references of record alone or in combination disclose all the limitations of the applicant's independent claims, and since the prior art of record does not teach and render obvious of having the aforementioned limitations, thus the independent claims read over the prior art of record and are considered to have allowable subject matter (assuming the above definiteness rejections were overcome as indicated above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH W ISKRA whose telephone number is (313) 446-4866. The examiner can normally be reached on M-F: 09:00-17:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IBRAHIME ABRAHAM can be reached on 571-270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH W ISKRA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761