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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 6, 2026 has been entered.
Response to Arguments
Applicant’s arguments, see pages 11-17, filed May 6, 2026, with respect to the rejection(s) of claim(s) 1, 2, 4-7 and10 under 35 U.S.C. 112 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of indefiniteness and lack of clarity within the claims. It is noted that while Applicant explained the overall invention in the remarks section, the claims fail to clearly set forth the structure of the apparatus that is sought for patentability.
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:
“load control device for applying load” in claims 1 and 4 [corresponding structure is pneumatic or hydraulic cylinder; see paragraph 0043].
“position control means for controlling the position” in claim 4 [no corresponding structure is shown or disclosed; see paragraph 0047]
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, 4, 6 and 7 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 regards to claim 1, the claim states “the manufacturing apparatus being composed of the forming roll stands and used in the BD step”, this renders the claim indefinite since it is not clear what the transitional phrase is for the claim. A transitional phrase defines the scope of the claim in terms of what unrecited elements or method step, if any, are excluded from the scope of the claim, as well as clearly separating the preamble from the body of the claim. Accordingly, the lack of a transitional phrase renders the claim indefinite because the scope of the claim is not clearly defined [see MPEP 2111.03]. For purposes of examination the claim is being interpreted as having “comprising” as the transitional phrase.
The claim states “forming of a metal strip as a forming target raw plate of forming a section of the strip continuously from a plate into a semi-circular shape”, this renders the claim indefinite since there appears to be missing language in the phrase “metal strip as a forming target raw plate of forming as section of the strip”. It is further noted that it is unclear if the limitation “from a plate” is intending to set forth a different plate from the target raw plate or if it is intending to refer to the target raw plate.
The claim states “during initial forming in the BD step, the manufacturing apparatus having a forming roll stand including…” and “during and after intermediate forming in the BD step, the manufacturing apparatus having a forming roll stand including…”, this renders the claim indefinite since it is unclear if the manufacturing apparatus is only to have the set forth structure during these specific forming times or if the manufacturing apparatus has this structure always. It is noted that the claim is directed to an apparatus, i.e. a manufacturing apparatus, therefore it is suggested to clearly define the apparatus by the structure of the apparatus, i.e. list specific structures of the apparatus the mechanical relationships between the listed structure, and not by the process in which the structure performs a forming.
The claim states “the manufacturing apparatus having a forming roll stand including upper and lower forming rolls”, it is unclear if the limitation “a forming roll stand” is setting forth a forming roll stand in addition to the forming roll stands previously recited or if the limitation is intending to refer to one of the previously recited forming roll stands.
The claim states “the manufacturing apparatus having a forming roll stand including side rolls”, it is unclear if the limitation “a forming roll stand” is setting forth a forming roll stand in addition to the forming roll stands previously recited or if the limitation is intending to refer to one of the previously recited forming roll stands.
The claim states “the plurality of forming roll stands employing…” it is unclear if the limitation “the plurality of forming roll stands” is intending to refer to all the previously recited, i.e. “the forming roll stands” used in the BD step, the “a forming roll” during initial forming, and the “a forming roll” during and after intermediate forming, or just intending to refer to a selected number of the previously recited forming roll stands.
The claim states “and using a forming roll for performing fit bending of bending the forming target raw plate along an inner roll external to or internal to a pinch point”, this renders the claim indefinite it is unclear if the limitation “a forming roll” is intending to set forth an additional forming roll to the previously recited upper, lower and side rolls, i.e. a total of six rolls are present in the roll stand, or if it is intending to reference one of the previously recited rolls. It is noted that the drawings and specification fail to provide support for there being six rolls within any of the breakdown roll stands. It is further noted that it is unclear if “an inner roll” is intending to introduce an additional roll structure or if it is intending to refer to a previously recited roll. Clarification and/or correction is required.
The claim states “breakdown roll stand having a forming roll exclusive to bending non-driven and not equipped with a roll drive mechanism”, it is unclear if the “a forming roll” is setting forth an additional roll structure or if it is intending to refer to a previously recited roll, i.e. upper, lower or side rolls.
The claim states “DR stands having drive rolls exclusive to driving for applying the thrust to the center portion of the raw plate using the upper and lower rolls”, it is unclear how the upper and lower rolls of the breakdown roll stands are to apply thrust to the center portion of the raw plate when they are previously set forth at being located an opposing ends of the plate. Clarification and/or correction is required.
With regards to claim 4, the claim is lacking a transitional phrase thereby rendering the claim indefinite since it is not clear what the transitional phrase is for the claim. A transitional phrase defines the scope of the claim in terms of what unrecited elements or method step, if any, are excluded from the scope of the claim, as well as clearly separating the preamble from the body of the claim. Accordingly, the lack of a transitional phrase renders the claim indefinite because the scope of the claim is not clearly defined [see MPEP 2111.03]. For purposes of examination the claim is being interpreted as having “comprising” as the transitional phrase.
The claim states “forming of a metal strip as a forming target raw plate of forming a section of the strip continuously from a plate into a semi-circular shape”, this renders the claim indefinite since there appears to be missing language in the phrase “metal strip as a forming target raw plate of forming as section of the strip”. It is further noted that it is unclear if the limitation “from a plate” is intending to set forth a different plate from the target raw plate or if it is intending to refer to the target raw plate.
There appears to be insufficient antecedent basis for the limitation “the raw pipe” found in line 9, it is noted that correcting the antecedent basis will not overcome the indefiniteness since it is unclear if this pipe is different from the raw plate with a circular shape previously referenced.
The claim states “from a strip-shape material into a round pipe”, this renders the claim indefinite since it is unclear if this material to pipe is different from the raw plate to semi-circular shape to circular shape previously recited in the claim.
The claim states “during initial forming in the BD step, the manufacturing apparatus having a forming roll stand including…” and “during and after intermediate forming in the BD step, the manufacturing apparatus having a forming roll stand including…”, this renders the claim indefinite since it appears to be further defining elements that are not positively recited in the claims. Specifically, the limitation “downstream from a manufacturing line of a breakdown mill used in a breakdown step” does note positively recite that this breakdown mill is structure encompassed within the manufacturing apparatus. Additionally, the use of the phrase “during…” renders the claim indefinite since it is unclear if the manufacturing apparatus is only to have the set forth structure during these specific forming times or if the manufacturing apparatus has this structure always. It is noted that the claim is directed to an apparatus, i.e. a manufacturing apparatus, therefore it is suggested to clearly define the apparatus by the structure of the apparatus, i.e. list specific structures of the apparatus the mechanical relationships between the listed structure, and not by the process in which the structure performs a forming.
The claim states “the breakdown mill has a forming roll stand including upper and lower forming rolls”, it is unclear if the limitation “a forming roll stand” is setting forth a forming roll stand in addition to the forming roll stands previously recited or if the limitation is intending to refer to one of the previously recited forming roll stands.
The claim states “the breakdown mill has a forming roll stand including side rolls”, it is unclear if the limitation “a forming roll stand” is setting forth a forming roll stand in addition to the forming roll stands previously recited or if the limitation is intending to refer to one of the previously recited forming roll stands.
The claim states “side rolls for supporting….and upper and lower forming rolls in a pair”, this renders the claim indefinite since the specification and drawings appear to illustrate and disclose a single lower roll for both upper rolls, i.e. a 2 to 1 ratio, within the breakdown mill used for intermediate forming.
The claim states “the plurality of forming roll stands employing…” it is unclear if the limitation “the plurality of forming roll stands” is intending to refer to all the previously recited, i.e. “the forming roll stands” used in the BD step, the “a forming roll” during initial forming, and the “a forming roll” during and after intermediate forming, or just intending to refer to a selected number of the previously recited forming roll stands.
The claim states “and using a forming roll for performing fit bending of bending the forming target raw plate along an inner roll external to or internal to a pinch point”, this renders the claim indefinite it is unclear if the limitation “a forming roll” is intending to set forth an additional forming roll to the previously recited upper, lower and side rolls, i.e. a total of six rolls are present in the roll stand, or if it is intending to reference one of the previously recited rolls. It is noted that the drawings and specification fail to provide support for there being six rolls within any of the breakdown roll stands. It is further noted that it is unclear if “an inner roll” is intending to introduce an additional roll structure or if it is intending to refer to a previously recited roll. Clarification and/or correction is required.
The claim states “the manufacturing apparatus is a breakdown mill having a configuration where the plurality of forming rolls is a breakdown roll stand…” this renders the claim indefinite since the claim previously recites the manufacturing apparatus encompasses the structure of a cluster mill and a fin-pass mill and the limitation is not appearing to exclude these mills, therefore the metes and bounds of the claim are indefinite. It is further noted that limitation “a breakdown mill” renders the claim indefinite since it is unclear if the limitation is intending to set forth a breakdown mill in addition to the previously recited breakdown mill or refer to the same breakdown mill previously recited.
The claim states “a breakdown roll stand having a forming roll exclusive to bending non-driven and not equipped with a roll drive mechanism”, it is unclear if the “a forming roll” is setting forth an additional roll structure or if it is intending to refer to a previously recited roll, i.e. upper, lower or side rolls. It is further noted it is unclear if the “a breakdown roll stand” is in addition to the forming roll stand previously recited within the breakdown mill or if it is referring to the same roll stand.
The claim states “DR stands having drive rolls exclusive to driving for applying the thrust to the center portion of the raw plate using the upper and lower rolls”, it is unclear how the upper and lower rolls of the breakdown roll stands are to apply thrust to the center portion of the raw plate when they are previously set forth at being located an opposing ends of the plate. Clarification and/or correction is required.
Claim limitation “position control means for controlling the position” 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 specification and drawings are absent of any structure that is to perform the controlling of the position of the fin-pass roll in the stand [see paragraph 0047] 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.
With regards to claim 6, there appears to be insufficient antecedent basis for the limitation “the identified forming roll stand configuration”, it is noted that correcting the antecedent basis would not overcome the indefiniteness since the identified configuration would still be undefined.
The claim states “breakdown rolls in each stand” it is unclear if this limitation is intending to refer to all the rolls, i.e. upper, lower, center, and side rolls, within the breakdown stand or if it is intending to refer to a selection of the breakdown rolls.
The claim states “calculating forming load applied to the forming roll in each stand” it is unclear which forming roll is being referred to in this limitation.
With regards to claim 7, there appears to be insufficient antecedent basis for the limitation “the identified forming roll stand configuration”, it is noted that correcting the antecedent basis would not overcome the indefiniteness since the identified configuration would still be undefined.
The claim states “a forming caliber composed of breakdown rolls, a forming caliber composed of cluster rolls, and a forming caliber composed of fin-pass rolls” it is unclear if this limitation is intending to refer to all the breakdown rolls, i.e. upper, lower, center, and side rolls, within the breakdown stand or if it is intending to refer to a selection of the breakdown rolls. Additionally, claim 4, from which claim 7 depends, only recites a single roll for the fin-pass roll stand and no rolls for the cluster roll stand, therefore it is unclear how a forming caliber for the cluster rolls and fin-pass rolls is present.
The claim states “calculating forming load applied to the forming roll in each stand” it is unclear which forming roll is being referred to in this limitation.
Examiner notes that no art has been applied to claims 1, 4 and 6-7 because “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art” [see MPEP 2173.06.II].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725
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