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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The amendment filed 2 May 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of the international patent application PCT/JP2021/040422, and of the Japanese Application No. 2020-186645, is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 2 November 2021. See MPEP 1893.03(b). Therefore, the specification amendment of 2 May 2023 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 2 and 4–7 are objected to because of the following informalities:
Claim 2, lines 3–4, should be amended to recite “while it restricts.”
Claim 4, line 4, should be amended to recite “acquire a force” or “acquire the force.”
Claims 5–7 are objected to due to dependency upon an objected-to claim.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), 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), 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) 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:
The biasing portion in claim 3 (“a stretchable elastic member such as a coil spring” (¶ 35); “a pneumatic or hydraulic cylinder, a servo motor, or the like” (¶ 113)).
The force acquisition section in claim 4 (part of a processor; intended to work with a force sensor, not claimed here).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), 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), 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).
Comment: Although the “slide mechanism” of claim 1, and the “force controller” of claim 4, are formulated as a limitation to be interpreted under § 112(f), they are not, since one of ordinary skill in the art would readily understand the first to be some sort of rail or the like, and the second to be some sort of computer, processor, or the like. See MPEP § 2181.I.C.: “Examiners will apply 35 U.S.C. 112(f) to a claim limitation that uses the term ‘means’ or generic placeholder associated with functional language, unless that term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., ‘filters’), or (2) otherwise modified by sufficient structure or material for achieving the claimed function.”
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.
Claims 1, 2, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawaura et al. (JP 2000-094248, document and translation provided by Applicant).
Claim 1: Kawaura discloses an industrial machine comprising:
a workpiece platform (23) on which a first workpiece (W1) is placed;
a pair of positioners (14, 15) configured to clamp the first workpiece placed on the workpiece platform (14 moves along linear guide 12, and 15 moves along linear guide 13, see fig. 1), one of the pair of positioners being movable toward and away from the other of the pair of positioners (ibid.); and
a slide mechanism (13) configured to support the workpiece platform slidably in an approaching direction in which the one of the pair of positioners approaches the other of the pair of positioners (23 is capable of sliding on 13 in both directions, while 14 and 15 both slide on 12 and 13, respectively, in both directions).
Claim 2: Kawaura discloses that the slide mechanism allows the workpiece platform to slide in the approaching direction from a predetermined initial position (either end of the slide positions able to be taken by 23 can fairly constitute a predetermined initial position from which the workpiece platform can slide in what can be considered the approaching direction), while it restricts the workpiece platform from sliding in a direction opposite to the approaching direction from the initial position (being at either end of the slide positions able to be taken by 23 would prevent it from sliding in the opposite direction).
Comment: Kawaura is able to be applied in this way to claim 2 because, given the absence of any biasing portion in Kawaura, there is no strict “initial position.”
Claim 8: Kawaura discloses that each of the pair of positioners includes a rotary table configured to rotate the clamped first workpiece about an axis parallel to the approaching direction (14a–14c and 14e, and 15a–15c and 15e).
Claims 1, 3, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nijakowski et al. (US Pub. 2016/0114437).
Claim 1: Niajakowski discloses an industrial machine comprising:
a workpiece platform (68) on which a first workpiece (either 38 or 48) is placed;
a pair of positioners (20, 22) configured to clamp the first workpiece placed on the workpiece platform (see figs. 3–5), one of the pair of positioners being movable toward and away from the other of the pair of positioners (ibid.); and
a slide mechanism (66) configured to support the workpiece platform slidably in an approaching direction in which the one of the pair of positioners approaches the other of the pair of positioners (given the structure described in at least ¶ 35 and shown in figs. 1 and 2, 66 is capable of sliding on 78, on which 68 sits, from a neutral position rightward (when viewing figs. 3–5) to a terminal position).
Comment: Nijakowski works differently from the disclosed invention because its workpiece platform is intended to work to hold the ends of two different workpieces (38 and 48). Nonetheless, Nijakowski is incidentally capable of holding a single workpiece, and the claim is not otherwise structurally limited by the first workpiece limitation, particularly since the first workpiece constitutes the articled worked upon by the apparatus (see MPEP § 2115).
Claim 3: Niajakowski discloses that the slide mechanism includes a biasing portion (82) configured to bias the workpiece platform in a direction opposite to the approaching direction when the workpiece platform slides in the approaching direction (described in ¶ 35).
Claim 4: Niajakowski discloses a first driver (24 connected to 20) configured to move the one of the pair of positioners (¶ 28 describes how hydraulic device 24 moves the first and second clamping device);
a force acquisition section configured to acquire force by which the one of the pair of positioners, which is moved in the approaching direction by the first driver, pushes the first workpiece (necessary and inherent given “Once a predetermined amount of force has been applied” (¶ 42)); and
a force controller configured to control an operation in which the first driver moves the one of the pair of positioners in the approaching direction so as to cause the pair of positioners to clamp the first workpiece, based on the force acquired by the force acquisition section (¶ 42 clearly suggests that the workpiece would be at least touched, and thereby clamped, at the second end portions 90, 90′ of the parts 38 and 48, and once the predetermined amount of force is applied, said predetermined amount of force being used to determine when to stop pushing the welding devices 34 and 42 on to the workpiece (and then take measurements with position sensors 36 and 46)).
Comment: The Office recognizes that the step discussed in ¶ 42 is not directed to what Nijakowski is actually considering to be its clamping step (which would be its “engaged position” discussed in ¶ 43). Nonetheless, the Office finds that Nijakowski reads on claim 4 because, strictly speaking, the way the hydraulic device 24 pushes the welding devices 34 and 42 against what could be a first workpiece constitutes clamping.
Allowable Subject Matter
Claims 5–7 would be allowable if rewritten to overcome the objections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, Nijakowski does not at all disclose or suggest that the first driver (24 working on 20) would move one of the pair of positioners when the position controller (28 in conjunction with 24, 36, and 46) positions the other of the pair of positioners at the target position. The disclosure is less than perfectly clear, but seems to suggest that its hydraulic device (24) applies force to both the first and second welding devices 34, 42 at the same time.
Claims 6 and 7 depend from claim 5.
Tanaka (JP 2011-177746 A) is relevant prior art that uses an elastic element in conjunction with a sliding clamp member, and also measures applied force and position, but it does not have a workpiece platform.
Lang et al. (US Pat. 3,937,381) has a workpiece holder shaped similar to what is disclosed, but is otherwise dissimilar from what is claimed and disclosed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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/JOHN J NORTON/Primary Examiner, Art Unit 3761