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 Group II, claims 10-20, and Species B, in the reply filed on 11/24/2025 is acknowledged.
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/24/2025.
Claim Objections
Claim(s) 18 is/are objected to because of the following informalities: claim 18 should read “The pin array of claim 17, . Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: wedge 130 mentioned in [0017]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The examiner notes that the examined claims are directed to a device/apparatus. Recitations directed toward a manner of operating a device do not differentiate apparatus claims from the prior art. MPEP 2114 (II). Furthermore, materials or articles worked upon by an apparatus in its intended use do not impart patentability to the claims. MPEP 2115.
The examiner notes that preamble statements reciting intended use generally do not limit an apparatus claim where the claim body defines a structurally complete invention. See MPEP 2111.02 (II).
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.
Claim(s) 11-19 is/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 11 recites the limitation "wherein each of the plurality of infiltration holes has a hole diameter larger than the pin diameter…" in lines 1-2. The “plurality of infiltration holes” are elements of a “tooling fixture,” as set forth in claim 10, and not part of the claimed pin array. The “tooling fixture” is referenced in the preamble of claim 10 with respect to the intended use of the claimed pin array (“for minimizing surface deformations of a perforated preform mounted within a tooling fixture”) but is not recited as part of the claimed apparatus. Accordingly, the limitation in claim 11 positively reciting features of the non-claimed tooling fixture renders the language unclear as to its intended limiting effect on the pin array.
Claims 12-19 depend from claim 11 and thus are rejected for the reason provided above.
Claim 16 recites the limitation “each of the plurality of pins further comprises a wedge portion extending away from the pin…” The limitation is unclear as to how a feature of a pin (a wedge), an integral part of the pin, can extend away from the pin. For further examination, the limitation is interpreted to mean essentially that the wedge tapers in a direction away from the backplate/non-working side, in line with Fig. 2.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 10-15 and 17-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Meilin et al., US 20200055210 A1.
Regarding claim 10, Meilin discloses a pin array (Figs. 2 and 4A, array of punching members 100a, 100b) for minimizing surface deformations of a perforated preform mounted within a tooling fixture (note that the intended use recitation does not include a structural limitation; the apparatus of Meilin is capable of working on a perforated preform mounted within a tooling fixture), the pin array comprising:
A backplate (Fig. 2, tool holder 102); and
A plurality of pins (Figs. 1-2, [0018], sleeves 100a1 of punching members 100a, 100b) extending away from the backplate (Fig. 2), each of the plurality of pins having a pin diameter (the tools/members being cylindrical, [0019], Figs. 1-2, with a circular cross-section, Fig. 3, and thus having a diameter);
Wherein, a position of the plurality of pins corresponds to a plurality of infiltration holes of the tooling fixture (note that the tooling fixture and its infiltration holes are not part of the claimed pin array; still, a position of the pins corresponds to a plurality of holes in a tooling fixture, holding plate 108, Fig. 4A).
Regarding claim 11, Meilin discloses the pin array of claim 10, wherein each of the plurality of infiltration holes has a hole diameter larger than the pin diameter (Figs. 4A, 6A-D) such that each of the plurality of pins are maneuverable into and out of the plurality of infiltration holes (Fig. 4A, 6A-D, [0023]).
Examiner note: claims 12-14 relate to features of a preform worked on by the claimed pin array, or features of the pin array recited relative to a generic “preform” and thus are only limiting to the extent that particular structure of the pin array is required by the claims. Features of a given preform do not limit the claimed pin array.
Regarding claim 12, Meilin discloses the pin array of claim 11, wherein the position of at least a subset of the plurality of pins corresponds to a plurality of z-channels (interpreted as a channel formed generally in a z-direction of a workpiece) formed in the preform (the punching members form vertically oriented apertures in a clamped workpiece, [0022]-[0023], and thus correspond to “z-channels” in a preform).
Regarding claim 13, Meilin discloses the pin array of claim 12. The remainder of the claim is entirely directed to features of a preform worked on by the claimed apparatus and does not limit any structure of the pin array. Still, Meilin discloses that apertures are formed in the workpiece/film which extend from a top surface to a bottom surface of the workpiece ([0023]-[0024]).
Regarding claim 14, Meilin discloses the pin array of claim 13, wherein each of the plurality of z-channels has a channel diameter being less than the pin diameter (the sleeve 100a1 diameter is larger than the punch tool 100b1, 100b2 diameter that forms the apertures, Fig. 4A, and thus the apertures/z-channels have a smaller diameter than the pin/sleeve diameter).
Regarding claim 15, Meilin discloses the pin array of claim 13, wherein each of the plurality of pins comprises: a shoulder portion (lowermost surface of sleeve 100a1, Figs. 2 and 4A) engageable with either the first surface or opposing second surface of the preform (structurally capable of being engaged with an underlying surface of a preform, Figs. 2 and 4A).
Regarding claim 17, Meilin discloses the pin array of claim 15, wherein each of the plurality of pins is formed as a cylinder (being a sleeve surrounding a cylindrical tool along its length, [0018]-[0019], and having a circular cross-section, Fig. 3) with a hollow center (functioning as a sleeve into which a punching tool 100b1, 100b2 is inserted, [0018]-[0019], Figs. 1A-1B, and thus having a hollow center).
Regarding claim 18, Meilin discloses the pin array of claim 17, further comprising a needle array comprising a plurality of needles (Figs. 1-2, [0018]-[0019], plurality of punching tools 100b1 and/or 100b2, which have a relatively smaller diameter and pointed tip capable of puncturing holes in a workpiece), each of the plurality of needles corresponding to one of the plurality of pins (Fig. 2).
Regarding claim 19, Meilin discloses the pin array of claim 18, wherein each of the plurality of needles is maneuverable into and out of the hollow center of the pin (the punching tools 100b1, 100b2 being removably held in the sleeves, [0018]).
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meilin et al., US 20200055210 A1, as applied to claim 15 above, in view of Batista et al., EP 3756843 A1.
Regarding claim 16, Meilin discloses the pin array of claim 15. Meilin does not disclose each of the plurality of pins further comprises a wedge portion extending away from the pin and insertable into at least a portion of a respective z-channel.
In the analogous art, Batista discloses a punch tool (Abstract, Figs. 3-5, punch tool 200) including a pin/sleeve (punch shaft 202, Figs. 3-4) surrounding a needle (perforation member 204, Figs. 3 and 5). Batista discloses the analogous pin/sleeve comprises a wedge portion (taper between larger outer diameter and smaller outer diameter of substantially cylindrical body 218, Figs. 3-4) extending away from the pin (Figs. 3-4) and insertable into at least a portion of a respective z-channel (capable of being inserted into at least a portion of a substantially vertically-oriented channel).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pins of Meilin to further comprise a wedge portion extending away from the pin and insertable into at least a portion of a respective z-channel in order to accommodate a perforating tool with a change in diameter along its length inside the pin, as shown by Batista, to reduce the amount of material required for forming the pins, and/or to facilitate its insertion into the tool holder and/or the holding plate.
Furthermore, it has been held that a change in shape of a device otherwise performing substantially the same function is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant. MPEP 2144.04(IV)(B).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meilin et al., US 20200055210 A1, as applied to claim 10 above, in view of Okamoto et al., US 3877120 A.
Regarding claim 20, Meilin discloses the pin array of claim 10. Meilin does not disclose the pin array is at least partially formed from a polymer material.
In the analogous art, Okamoto discloses a pin array (Fig. 23, needle board) comprising a plurality of corresponding pins/needles (Fig. 23, conjugated needles 73). Okamoto teaches forming a needle adapter (Figs. 40-45), into which the needles are inserted, with a resin (cols. 29-30, first two paragraphs).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the pin array was at least partially formed from a polymer material, such as a resin, as taught by Okamoto, as the material type was suitable for use in forming a pin array and is generally moldable, lightweight, readily available, and cost-effective. Furthermore, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. MPEP 2144.07.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 of copending Application No. 17957558 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 10, reference claims 1 and 3 disclose a spiked array (corresponding to the presently claimed pin array) comprising a backplate (claim 1, plate) and a plurality of pins extending away from the backplate (claim 1, a plurality of metallic spikes projecting away from the plate), each of the plurality of pins having a pin diameter (claim 3, diameter), wherein a position of the plurality of pins corresponds to a plurality of infiltration holes of a tooling fixture (claim 1, the spiked array is engageable with the tooling fixture such that the plurality of metallic spikes extend at least partially into respective ones of the plurality of receiving holes of the tooling fixture).
Regarding instant claim 11, reference claim 1 recites that the spikes extend into receiving holes of the tooling fixture, and therefore the spikes have a diameter less than the hole diameter.
Instant claims 12-14 recite features of a preform and do not recite additional structure of the pin array amounting to a patentable distinction from the structure of reference claim 1.
Regarding instant claims 15-16, reference claim 1 recites spikes and reference claim 4 recites a change in diameter of a length of the spikes. The claims do not recite a shoulder and a wedge; however, a change in shape of an element otherwise performing substantially the same function generally does not amount to a patentable distinction. MPEP 2144.04(IV)(B).
Claim(s) 17-20 is/are considered patentably distinct from the reference claims and thus is/are not rejected under double patenting. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 6, 8, and 11 of copending Application No. 18123037 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 10, reference claims 1 and 8 recite a needle array (corresponding to the presently claimed pin array) comprising a backplate (claims 1/8, backplate) and a plurality of pins extending away from the backplate (claims 1/8, a plurality of needles extending away from the backplate), each of the plurality of pins having a pin diameter (claims 6/11, diameter), wherein a position of the plurality of pins corresponds to a plurality of infiltration holes of a tooling fixture (claim 8, each of the plurality of needles is aligned with a respective infiltration hole of the plurality of infiltration holes of a tooling fixture).
Regarding instant claim 11, a diameter of the infiltration holes of the non-claimed tooling fixture does not patentably distinguish the presently claimed pin array. The needles of the reference claims have a diameter and are capable of being used with a tooling fixture having holes of a larger diameter.
Instant claims 12-14 recite features of a preform and do not recite additional structure of the pin array amounting to a patentable distinction from the structure of reference claims 1 and 8.
Regarding instant claims 15-16, reference claims 1 and 8 recite needles. The claims do not recite a shoulder and a wedge; however, a change in shape of an element otherwise performing substantially the same function generally does not amount to a patentable distinction. MPEP 2144.04(IV)(B).
Regarding instant claim 17, reference claims 1/8 recite that each of the needles comprises a polymer sheath covering a metallic body, i.e., a sheath with a hollow center housing the body. The shape is understood as cylindrical, since the needles have a diameter (claims 6, 11).
Regarding instant claim 18, reference claims 1/8 recite that each of the needles comprises a metallic body, corresponding to the claimed needle array.
Regarding instant claim 20, reference claim 8 recites the polymer sheath.
Claim(s) 19 is/are considered patentably distinct from the reference claims and thus is/are not rejected under double patenting. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 21 of copending Application No. 18123046 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 10, reference claim 1 recites a needle array (corresponding to the presently claimed pin array) comprising a backplate (claim 1, backplate) and a plurality of pins extending away from the backplate (claim 1, a plurality of needles extending away from the backplate), wherein a position of the plurality of pins corresponds to a plurality of infiltration holes of a tooling fixture (a plurality of needles being capable of corresponding to a plurality of holes of a separate fixture). Reference claim 1 does not recite that each of the pins has a pin diameter; however, the claim recites that the needles are comprised of a bundle of filaments, a metallic sheath surrounding the bundle, and a shaped tip, each of which either alone or as an assembly would have been expected to have a diameter.
Regarding instant claim 11, a diameter of the infiltration holes of the non-claimed tooling fixture does not patentably distinguish the presently claimed pin array. The needles of the reference claims would have been expected to have a diameter as set forth above and are capable of being used with a tooling fixture having holes of a larger diameter.
Instant claims 12-14 recite features of a preform and do not recite additional structure of the pin array amounting to a patentable distinction from the structure of reference claim 1.
Regarding instant claims 15-16, reference claim 1 recites needles comprised of a bundle of filaments, a sheath, and a shaped tip. The claims do not recite a shoulder and a wedge; however, a change in shape of an element otherwise performing substantially the same function generally does not amount to a patentable distinction. MPEP 2144.04(IV)(B).
Regarding instant claim 17, reference claim 1 recites that each of the needles comprises a metallic sheath surrounding a bundle of ceramic filaments, i.e., a sheath with a hollow center. The claims do not recite the sheath is a cylinder; however, a change in shape of an element otherwise performing substantially the same function generally does not amount to a patentable distinction. MPEP 2144.04(IV)(B).
Regarding instant claim 18, reference claim 1 recites that each of the needles comprises a shaped tip on an end of a bundle, where the shaped tip is a sharpened point (claim 21), corresponding to the claimed needle array.
Claim(s) 19-20 is/are considered patentably distinct from the reference claims and thus is/are not rejected under double patenting. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20200101681 A1, Porte; US 20240158970 A1, Pujar; US 20140260438 A1, Matsumura; US 20170268141 A1, Sheehan; US 20210260713 A1, Song; KR 20110129538 A, Byun; JP 2017019028 A, Kamiya; DE 102017211906 A1, Niesen; disclose relevant pin/needle arrays.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER L GROUX whose telephone number is (571)272-7938. The examiner can normally be reached Monday - Friday: 9am - 5pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at (571) 270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.L.G./Examiner, Art Unit 1754
/SUSAN D LEONG/ Supervisory Patent Examiner, Art Unit 1754