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 .
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.
Such claim limitation(s) is/are:
“thrust control means for controlling thrust” in claims 1, 6 [corresponding structure is fluid pressure device, i.e. pneumatic or hydraulic cylinder; see paragraph 0019 or electric motor; see paragraph 0043];
“driving rotation number control means…to apply thrust” in claims 1, 6 [no corresponding structure provided];
“load control means for applying load” in claims 2, 6 [pneumatic or hydraulic cylinder [see paragraph 0043];
“thrust distribution control means for distributing all thrust” in claim 4 [corresponding structure is arithmetic device that includes a storage core unit; 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 1-2, 4-7 and 10 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 comprising a forming mill provided in a manufacturing line direction”, it is unclear if this forming mill is in addition to the forming mill previously recited or if the limitation is intending to refer to the previously recited forming mill. For examination purposes the limitation is being interpreted as referring to the same forming mill, i.e. there is a single forming mill.
The claim states “the breakdown roll (BD) forming stand having a configuration in which multi-use forming rolls…”, it is unclear if this limitation is intending to refer to one of the plurality of breakdown roll forming stands or if the limitation is intending to refer to the plurality of breakdown roll forming stands. Clarification and/or correction is required.
The claim states “a several-fold range in diameter ratio”, the metes and bounds of the limitation are undefined. Specifically, it is unclear what is encompassed within a several fold range in diameter ratio, i.e. is the limitation claiming a ratio and if so between what elements? or is the limitation claiming a range in which case what are the metes and bounds of the range. Clarification and/or correction is required.
The claim states “the upper and lower rolls in a pair of the breakdown roll (BD) forming stand”, this renders the claim indefinite since the previously recites the upper and lower rolls within an alternative limitation “combining an upper roll and a lower roll in a pair and a bottom roll, or further combining side rolls in a pair”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired [see MPEP § 2173.05(c)]. In the present instance, the broad recitation is the alternative limitation, and the limitation selecting the option of the upper and lower rolls is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The claim states “the drive roll (DR) stands applying thrust to the forming target raw material while pinchingly driving a central portion of the raw material using the upper and lower rolls”, it is unclear how the upper and lower rolls, which are set forth as being part of the breakdown roll forming stand and are non-driven (idle) rolls, are to be used within the drive roll stand to be able to drive the raw material. Clarification and/or correction is required.
Claim limitation “driving rotation number control means...to apply thrust” 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. 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 4, claim limitation “position control means for controlling the position of the fin-pass roll” 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 appears to state the position control means comprises of a position control core [see paragraph 0048], however this fails to provide adequate structure. Specifically, it is unclear what structure is encompassed within a control core. 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.
Additionally, claim limitation “thrust distribution control means for distributing all thrust” 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 appears to state the thrust distribution control means comprises of an arithmetic device/means including a storage core [see paragraph 0048], however this fails to provide adequate structure. Specifically, it is unclear what structure is encompassed within a storage core. 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, the claim states “the manufacturing apparatus obtaining a welded pipe”, it is unclear if this is intending to refer to the welded pipe set forth in the preamble or if it is intending to refer to a different welded pipe. For examination purposes the limitation is being interpreted as referring to the same welded pipe in the preamble.
The claim states “used in a breakdown step”, “obtaining a welded pipe by performing butt welding at opposite edge portions…”, “for roll forming of the raw material from a plate shape into a semi-circular cylindrical shape nad further into a circular cylindrical shape continuously”, “for bending from a plate shape into a semi-circular cylindrical shape”, “combining an upper roll and a lower roll in a pair and a bottom roll”, and “further combining side rolls in a pair”, it is unclear if these limitations are intended to be encompassed within the method of manufacturing. It is noted that the limitations appear to set forth specific steps but are not clearly recited within the body of the claim but rather in the preamble of the claim, thus it is unclear if these steps are required within the overall method. Clarification and/or correction is required.
The claim states “a several-fold range in diameter ratio”, the metes and bounds of the limitation are undefined. Specifically, it is unclear what is encompassed within a several fold range in diameter ratio, i.e. is the limitation claiming a ratio and if so between what elements? or is the limitation claiming a range in which case what are the metes and bounds of the range. Clarification and/or correction is required.
The claim states “the upper and lower rolls in a pair of the breakdown roll (BD) forming stand”, this renders the claim indefinite since the previously recites the upper and lower rolls within an alternative limitation “combining an upper roll and a lower roll in a pair and a bottom roll, or further combining side rolls in a pair”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired [see MPEP § 2173.05(c)]. In the present instance, the broad recitation is the alternative limitation, and the limitation selecting the option of the upper and lower rolls is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The claim states “the drive roll (DR) stands applying thrust to the forming target raw material while pinchingly driving a central portion of the raw material using the upper and lower rolls”, it is unclear how the upper and lower rolls, which are set forth as being part of the breakdown roll forming stand and are non-driven (idle) rolls, are to be used within the drive roll stand to be able to drive the raw material. Clarification and/or correction is required.
The claim continuously refers to a breakdown step, however the claim fails to define the process that occurs within the breakdown step. Clarification and/or correction is required.
There appears to be insufficient antecedent basis for the limitation “the identified forming roll stand configuration”, additionally it is unclear what this specific forming roll stand configuration encompasses, i.e. is it referring to the configuration of an upper and lower roll pair and a bottom roll, or is it referring to the side roll pair configuration.
With regards to claim 7, the claim states “the manufacturing apparatus obtaining a welded pipe”, it is unclear if this is intending to refer to the welded pipe set forth in the preamble or if it is intending to refer to a different welded pipe. For examination purposes the limitation is being interpreted as referring to the same welded pipe in the preamble.
The claim states “used in a breakdown step, cluster step, and a fin-pass step”, “obtaining a welded pipe by performing butt welding at opposite edge portions…”, “for roll forming of the raw material from a plate shape into a semi-circular cylindrical shape nad further into a circular cylindrical shape continuously”, “for bending from a plate shape into a semi-circular cylindrical shape”, “combining an upper roll and a lower roll in a pair and a bottom roll”, and “further combining side rolls in a pair”, it is unclear if these limitations are intended to be encompassed within the method of manufacturing. It is noted that the limitations appear to set forth specific steps but are not clearly recited within the body of the claim but rather in the preamble of the claim, thus it is unclear if these steps are required within the overall method. Clarification and/or correction is required.
The claim states “a several-fold range in diameter ratio”, the metes and bounds of the limitation are undefined. Specifically, it is unclear what is encompassed within a several fold range in diameter ratio, i.e. is the limitation claiming a ratio and if so between what elements? or is the limitation claiming a range in which case what are the metes and bounds of the range. Clarification and/or correction is required.
The claim states “the upper and lower rolls in a pair of the breakdown roll (BD) forming stand”, this renders the claim indefinite since the previously recites the upper and lower rolls within an alternative limitation “combining an upper roll and a lower roll in a pair and a bottom roll, or further combining side rolls in a pair”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired [see MPEP § 2173.05(c)]. In the present instance, the broad recitation is the alternative limitation, and the limitation selecting the option of the upper and lower rolls is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The claim states “the drive roll (DR) stands applying thrust to the forming target raw material while pinchingly driving a central portion of the raw material using the upper and lower rolls”, it is unclear how the upper and lower rolls, which are set forth as being part of the breakdown roll forming stand and are non-driven (idle) rolls, are to be used within the drive roll stand to be able to drive the raw material. Clarification and/or correction is required.
The claim refers to a breakdown step, a cluster step, a fin-pass step and a squeeze step, however the claim fails to define the process that occurs within these steps. Clarification and/or correction is required.
There appears to be insufficient antecedent basis for the limitation “the identified forming roll stand configuration”, additionally it is unclear what this specific forming roll stand configuration encompasses, i.e. is it referring to the configuration of an upper and lower roll pair and a bottom roll, or is it referring to the side roll pair configuration.
With regards to claim 10, claim limitation “position control means for controlling the position of the fin-pass roll” 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 appears to state the position control means comprises of a position control core [see paragraph 0048], however this fails to provide adequate structure. Specifically, it is unclear what structure is encompassed within a control core. 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.
Additionally, claim limitation “thrust distribution control means for distributing all thrust” 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 appears to state the thrust distribution control means comprises of an arithmetic device/means including a storage core [see paragraph 0048], however this fails to provide adequate structure. Specifically, it is unclear what structure is encompassed within a storage core. 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.
Examiner notes that no art has been applied to claims 1-2, 4-7 and 10 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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