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 .
Claims 1-20 are currently pending. Claims 1-20 are rejected.
Information Disclosure Statement
The information disclosure statement filed March 23, 2023 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the US “Publication Number” “20210035423” does not appear to be correct. The reference appears to be a different subject matter and the noted “Publication Date” and “Name” do not match. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to because it contains unlabeled rectangular boxes without descriptive text labels. Specifically, Figure 7 is only numbered boxes without any descriptive text.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 Objections
Claim 14 is objected to because of the following informalities:
Regarding Claim 14, Line 1 recites “the punch bit comprises a punch bit”. This appears to be repetitive and is revisable to be more concise.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-9, 11-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ruetz et al. (US 2019/0030649 A1), hereinafter Ruetz, in view of Nawrodt et al. (US 2014/0238962 A1), hereinafter Nawrodt, and Mach et al. (US 2025/0214178 A1), hereinafter Mach.
Regarding Claim 1, Figures 1-2 of Ruetz teach a method for processing a tubular workpiece (2), comprising: providing instructions, with a computing device (6), for cutting the tubular workpiece (2) according to a desired design (31, see examples in Figures 3-4); loading the tubular workpiece (2) into a processing machine (1) comprising a laser-cutting device (4); operating the laser-cutting device (4) [0031-0033, 0037].
Ruetz does not expressly teach a punch bit, operating the laser-cutting device to cut the tubular workpiece to form an opening and a slug in the opening; and operating the punch bit to punch the slug to remove the slug from the opening as claimed. However, a punch bit would have been obvious in view of Nawrodt.
Figures 1a-1b of Nawrodt teach a method for processing hollow workpieces. Note a tube is a cylindrical object with a hollow center, i.e. a hollow workpiece. The method comprises a processing machine comprising a punch bit (5), operating the laser-cutting device (not shown) to cut the workpiece to form an opening (formed by 2) and a slug (6) in the opening; and operating the punch bit (5) to punch the slug (6) to remove the slug (6) from the opening (see transition of punch bit (5) from Figure 1a to 1b) [0032-0038]. The creation of a slug is evidenced to be an expected result of using laser cutting, as it is the remaining part removed. Thus, Nawrodt presents an alternative known method for producing openings for hollow workpieces other than the method of the cited embodiment of Ruetz. One of ordinary skill in the art would simply substitute between known methods, predictably resulting in openings being successfully produced.
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 method taught by Ruetz with a punch bit, operating the laser-cutting device to cut the tubular workpiece to form an opening and a slug in the opening; and operating the punch bit to punch the slug to remove the slug from the opening as exemplified by Nawrodt, since one of ordinary skill would simply substitute between known methods that predictably result in the successful forming of an opening.
Ruetz does not expressly teach the operating being based on instructions as claimed. However, use of instructions would have been obvious in view of Mach.
Figure 1 of Mach teaches a method of processing with a laser-cutting device (4) and a punch bit (14, connected to 5). Particularly, the operating using a computing device is based on instructions [0060-0061]. Ruetz merely recites the usage of a computing device (6) (Ruetz, [0031]). Meanwhile, Mach evidences the usage of a computing device involves the operating of the components based on the instructions of the computing device.
It would have been obvious to one of ordinary skill in the art to modify the method taught by Ruetz-Nawrodt such that operating the laser-cutting device and punch bit are based on instructions as suggested by Mach, to provide the benefit of properly implementing the computing device to carry out the desired method.
Regarding Claim 2, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 1.
The combination of Ruetz-Mach teaches receiving, on the computing device, a shape, orientation, size, and location of a desired opening to be formed in the desired design; and generating, on the computing device, the instructions for cutting the tubular workpiece according to the desired design. Paragraph [0031] of Ruetz note the control of the machine is by a computing device (6). The shape, orientation, size, and location are properties of the desired output. See for instance Figures 3-4 with particular designs of particular shape, orientation, size at a particular location for opening (31). Paragraph [0060] of Mach describes the operating of a computing device. Mach elaborates computing devices processing desired outputs into control commands that have method steps which control the respective tools.
Regarding Claim 3, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 1.
The modification by Nawrodt in Claim 1 results in applying a vacuum force to move the slug (6) to a desired destination after removing the slug (6) from the opening. Paragraph [0038] of Nawrodt states the slugs may be sucked out, i.e. vacuumed.
Regarding Claim 4, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 1.
The modification by Nawrodt in Claim 1 results in the punch bit on a tool, wherein operating the punch bit to punch the slug (6) to remove the slug (6) from the opening comprises operating the tool [0035]. See Figure 1a-1b of Nawrodt, wherein the punch bit is interpretable as the dark part of (5) while the tool is interpretable as the light part of (5) or whatever not illustrated portion (5) is attached to.
The modification by Mach in Claim 1 results in the operating being based on the instructions, as exemplified by instructions to operate punch bit tool (5) of Mach [0060].
The cited embodiment of Ruetz does not expressly teach mounting the punch bit on a tool holder as claimed. However, mounting the punch bit would have been obvious in view of a different embodiment of Ruetz.
Figure 8 of Ruetz teaches an embodiment that involves punching. The method involves mounting the punch bit (44) on a tool holder (21). By being in a mounted states, the bit (44) is interchangeable with a flow drill (33) [0050-0052]. Thus, the mounting of the punch bit is a structure which allows exchanging for different tools when desired.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt-Mach such that the method is further comprising mounting the punch bit on a tool holder as suggested by the other embodiment of Ruetz, to provide the benefit of allowing the punch bit to be exchangeable.
Regarding Claim 5, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 1.
Figure 2 of Ruetz teaches wherein the tubular workpiece (2) has an annular thickness in a radial direction (see wall of 2 in the cross-section exemplified).
Ruetz, Nawrodt, and Mach do not expressly teach wherein the slug is formed with a minimum dimension in an axial direction less than the annular thickness as claimed.
However, the courts have held various practices to be routine expedients, requiring only ordinary skill in the art. One such practice is the change in relative dimensions. Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct (see MPEP 2144.04, IV, A). Regarding the instant application, the claim is related to a relative dimension between the minimum in the axial direction and the annular thickness of the tubular workpiece. There is no evidence of the claimed method performing differently than the prior art combination. The punch bit is operated without consideration of such in the prior art. Thus, such a difference in relative dimensions is considered a matter of design choice.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt-Mach such that the slug is formed with a minimum dimension in an axial direction less than the annular thickness, since a change in relative dimensions is considered an obvious matter of design choice.
Regarding Claims 6-9, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 1.
Ruetz, Nawrodt, and Mach do not expressly teach wherein the slug is formed with a minimum dimension of 2/3 millimeters (Claims 6/8), and wherein the punch bit comprises a distal end with a diameter of no more than 1.5/2.5 millimeters (Claims 7/9) as claimed.
However, the courts have held various practices to be routine expedients, requiring only ordinary skill in the art. Two of such practices include a change in size and a change in relative dimensions. Limitations relating to size or a mere scaling of processes are not patentably distinguishable over prior art. Additionally, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct (see MPEP 2144.04, IV, A). Regarding the instant application, the recitation of specific numeral size values is considered a mere change in size or scaling. These are not considered patentable distinctions. The dimensions of the minimum dimensions compared to the diameter of the punch bit is considered a change in relative dimensions. There is no evidence of a change in performance, as the method exemplified in Figures 1a-1b of Nawrodt at least show the punch bit (5) is to be equal to or smaller than the opening created, i.e. if the bit were larger it would not fit [0035]. As such, the differences are considered merely a matter of design choice.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt-Mach such that the slug is formed with a minimum dimension of 2/3 millimeters (Claims 6/8), and wherein the punch bit comprises a distal end with a diameter of no more than 1.5/2.5 millimeters (Claims 7/9), since changes in size/scale and differences in relative dimensions are considered matters of design choice.
Regarding Claim 11, Figures 1-2 of Ruetz teach a method for processing a tubular workpiece (2), comprising: loading the tubular workpiece (2) into the processing machine (1), wherein the processing machine (1) comprises a laser-cutting device (4); operating the laser-cutting device (4) [0031-0033, 0037].
Ruetz does not expressly teach a punch bit, operating the laser-cutting device to cut the tubular workpiece to form an opening and a slug in the opening; and operating the punch bit to punch the slug to remove the slug from the opening as claimed. However, a punch bit would have been obvious in view of Nawrodt.
Figures 1a-1b of Nawrodt teach a method for processing hollow workpieces. Note a tube is a cylindrical object with a hollow center, i.e. a hollow workpiece. The method comprises a punch bit (5), operating the laser-cutting device (not shown) to cut the workpiece to form an opening (formed by 2) and a slug (6) in the opening; and operating the punch bit (5) to punch the slug (6) to remove the slug (6) from the opening (see transition of punch bit (5) from Figure 1a to 1b) [0032-0038]. The creation of a slug is evidenced to be an expected result of using laser cutting, as it is the remaining part removed. Thus, Nawrodt presents an alternative known method for producing openings for hollow workpieces other than the method of the cited embodiment of Ruetz. One of ordinary skill in the art would simply substitute between known methods, predictably resulting in openings being successfully produced.
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 method taught by Ruetz with a punch bit, operating the laser-cutting device to cut the tubular workpiece to form an opening and a slug in the opening; and operating the punch bit to punch the slug to remove the slug from the opening as exemplified by Nawrodt, since one of ordinary skill would simply substitute between known methods that predictably result in the successful forming of an opening.
The cited embodiment of Ruetz does not expressly teach mounting a punch bit onto a spindle device of a processing machine, wherein the spindle device is located in a magazine of the processing machine; selecting the punch bit and spindle device from the magazine with a tool holder as claimed. However, such a mounting for the punch bit would have been obvious in view of a different embodiment of Ruetz.
Figure 8 of Ruetz teaches a different embodiment where a punch bit is used. Mounting a punch bit (44) onto a device of the processing machine (1), selecting the punch bit (44) and the device with a tool holder (21) [0050-0052]. Note from paragraph [0052], it is clear the device is a spindle device as it is interchangeable with a flow drill (33) in the tool holder (21), i.e. the broadest reasonable interpretation of a spindle is any device allows for mountings adapted for rotating objects, thus the holder (21) holds spindles. The mounting of the punch bit is a structure which allows exchanging for different tools when desired. Additionally, Ruetz exemplifies the presence of a magazine (25) in Figure 2 for example. The magazine is used to store tools of the processing machine (1) and allows for the storage of multiple tools until usage [0019, 0035].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt with the steps of mounting a punch bit onto a spindle device of a processing machine, wherein the spindle device is located in a magazine of the processing machine; selecting the punch bit and spindle device from the magazine with a tool holder as suggested by the other embodiment of Ruetz. The mounting arrangement provides the benefit of allowing interchangeability between different tools when desired. The use of a magazine provides the benefit of storing multiple tools that are set aside until use of the tools are desired.
Ruetz does not expressly teach the operating and selecting being done automatically as claimed. However, being automatic would have been obvious in view of Mach.
Figure 1 of Mach teaches a method of processing with a laser-cutting device (4) and a punch bit (14, connected to 5). Particularly, the operating using a computing device is based on instructions and performed automatically [0060-0061]. Note the usage of method steps with open/closed loop controls, which is considered an automatic process. Ruetz merely recites the usage of a computing device (6) (Ruetz, [0031]). Meanwhile, Mach evidences the usage of a computing device involves the automatic operating of the components based on the instructions of the computing device. In other words, the proper usage of the computing device results in automatic operations.
It would have been obvious to one of ordinary skill in the art to modify the method taught by Ruetz-Nawrodt such that operating/selecting the laser-cutting device and punch bit are done automatically as suggested by Mach, to provide the benefit of properly implementing the computing device to carry out the desired method.
Regarding Claim 12, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 11.
Figure 2 of Ruetz teaches wherein the tubular workpiece (2) has an annular thickness in a radial direction (see wall of 2 in the cross-section exemplified).
Ruetz, Nawrodt, and Mach do not expressly teach wherein the slug is formed with a minimum dimension in an axial direction less than the annular thickness as claimed.
However, the courts have held various practices to be routine expedients, requiring only ordinary skill in the art. One such practice is the change in relative dimensions. Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct (see MPEP 2144.04, IV, A). Regarding the instant application, the claim is related to a relative dimension between the minimum in the axial direction and the annular thickness of the tubular workpiece. There is no evidence of the claimed method performing differently than the prior art combination. The punch bit is operated without consideration of such in the prior art. Thus, such a difference in relative dimensions is considered a matter of design choice.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt-Mach such that the slug is formed with a minimum dimension in an axial direction less than the annular thickness, since a change in relative dimensions is considered an obvious matter of design choice.
Regarding Claims 13-16, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 11.
Ruetz, Nawrodt, and Mach do not expressly teach wherein the slug is formed with a minimum dimension of 2/3 millimeters (Claims 13/15), and wherein the punch bit comprises a punch bit having a distal end with a diameter of no more than 1.5 millimeters / wherein the punch bit comprises a distal end with a diameter of no more than 2.5 millimeters (Claims 14/16) as claimed.
However, the courts have held various practices to be routine expedients, requiring only ordinary skill in the art. Two of such practices include a change in size and a change in relative dimensions. Limitations relating to size or a mere scaling of processes are not patentably distinguishable over prior art. Additionally, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct (see MPEP 2144.04, IV, A). Regarding the instant application, the recitation of specific numeral size values is considered a mere change in size or scaling. These are not considered patentable distinctions. The dimensions of the minimum dimensions compared to the diameter of the punch bit is considered a change in relative dimensions. There is no evidence of a change in performance, as the method exemplified in Figures 1a-1b of Nawrodt at least show the punch bit (5) is to be equal to or smaller than the opening created, i.e. if the bit were larger it would not fit [0035]. As such, the differences are considered merely a matter of design choice.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt-Mach such that the slug is formed with a minimum dimension of 2/3 millimeters (Claims 13/15), and wherein the punch bit comprises a distal end with a diameter of no more than 1.5/2.5 millimeters (Claims 14/16), since changes in size/scale and differences in relative dimensions are considered matters of design choice.
Regarding Claim 18, Figures 1-2 of Ruetz teach a machine (1) for processing a tubular work piece (2), comprising: a laser-cutting device (4) configured to cut an opening in the tubular workpiece (2); a computing device (6) [0031-0033, 0037].
Ruetz does not expressly teach wherein a cut slug is formed in the opening; and a punch bit configured to push the cut slug out of the opening as claimed. However, a punch bit would have been obvious in view of Nawrodt.
Figures 1a-1b of Nawrodt teach a machine for processing hollow workpieces. Note a tube is a cylindrical object with a hollow center, i.e. a hollow workpiece. The machine comprises a laser-cutting device (not shown) configured to cut an opening (formed by 2) in the workpiece, wherein a cut slug (6) is formed in the opening; and a punch bit (5) configured to push the cut slug (6) out of the opening (see transition of punch bit (5) from Figure 1a to 1b) [0032-0038]. The creation of a slug is evidenced to be an expected result of using laser cutting, as it is the remaining part removed. Thus, Nawrodt presents an alternative known configuration for devices producing openings for hollow workpieces other than the device of the cited embodiment of Ruetz. One of ordinary skill in the art would simply substitute between known device configurations, predictably resulting in openings being successfully produced.
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 machine taught by Ruetz such that wherein a cut slug is formed in the opening; and a punch bit configured to push the cut slug out of the opening as exemplified by Nawrodt, since one of ordinary skill would simply substitute between known machine and device configurations that predictably result in the successful forming of an opening.
Ruetz-Nawrodt do not expressly teach the computing device configured to instruct the laser-cutting device to automatically cut the tubular workpiece at selected locations and configured to automatically instruct the punch bit to push the cut slugs out of the selected locations as claimed. However, configuring the computing device as such would have been obvious in view of Mach.
Figure 1 of Mach teaches a machine for processing a workpiece comprising a laser-cutting device (4) and a punch bit (14, connected to 5). Particularly, the machine uses a computing device configured to instruct the laser-cutting device (4) to automatically cut the workpiece at selected locations and configured to automatically instruct the punch bit (connected to 5) to push cut slugs out of the selected locations [0060-0061]. Note the use of program controls to execute method steps in a loops to perform the intended functions of tools (4, 5), i.e. they are automated. Ruetz merely recites the usage of a computing device (6) (Ruetz, [0031]). Meanwhile, Mach evidences the usage of a computing device involves the automatic operation of the components based on the instructions of the computing device.
It would have been obvious to one of ordinary skill in the art to modify the machine taught by Ruetz-Nawrodt such that the computing device is configured to instruct the laser-cutting device to automatically cut the tubular workpiece at selected locations and configured to automatically instruct the punch bit to push the cut slugs out of the selected locations as suggested by Mach, to provide the benefit of properly implementing the computing device to carry out its desired function.
Regarding Claim 19, Ruetz, Nawrodt, and Mach teach the machine as set forth in Claim 18.
Figure 2 of Ruetz further teaches a magazine (25) [0035].
The limitation of wherein the punch bit is stored in the magazine before use is treated as intended use of the claimed magazine. Patentability is dependent upon the structural limitations of the claimed apparatus, not the manner in which the claimed apparatus is intended to be employed (see MPEP 2114, II). Paragraph [0035] evidences the capability of storing objects, thus the required structure of the claim is met.
Claims 10, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ruetz, Nawrodt, and Mach as applied to Claims 9, 16, and 18 above, and further in view of Kuriki et al. (US 2012/0111161 A1), hereinafter Kuriki.
Regarding Claim 10, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 9.
Ruetz, Nawrodt, and Mach do not expressly teach wherein the punch bit has a distal portion extending from the distal end to a tapered portion as claimed. However, a tapered portion would have been obvious in view of Kuriki.
Figures 1A-1B of Kuriki teach a punch bit (2a) that has a distal portion extending from a distal end to a tapered portion (see 2a tapering from top to bottom portions). The tapered shape reduces the diameter for its usage with the punch guide (13) [0042]. Thus, Kuriki evidences a tapered portion helps provide a reduced diameter in situations where a smaller diameter is desirable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt-Mach such that the punch bit has a distal portion extending from the distal end to a tapered portion as suggested by Kuriki, to provide the benefit of allowing a reduction in diameter of the punch bit when a smaller diameter is desired for a given application.
Ruetz, Nawrodt, Mach, and Kuriki do not expressly teach wherein the distal portion has a constant diameter of no more than 5 millimeters as claimed. However, such a modification would have been an obvious matter of design choice, since changes in size/scale and differences in relative dimensions are considered matters of design choice. See MPEP 2144.04, IV, A and the rejection of Claims 8-9 above.
Regarding Claim 17, Ruetz, Nawrodt, and Mach teach the method as set forth in Claim 16.
Ruetz, Nawrodt, and Mach do not expressly teach wherein the punch bit has a distal portion extending from the distal end to a tapered portion as claimed. However, a tapered portion would have been obvious in view of Kuriki.
Figures 1A-1B of Kuriki teach a punch bit (2a) that has a distal portion extending from a distal end to a tapered portion (see 2a tapering from top to bottom portions). The tapered shape reduces the diameter for its usage with the punch guide (13) [0042]. Thus, Kuriki evidences a tapered portion helps provide a reduced diameter in situations where a smaller diameter is desirable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method taught by Ruetz-Nawrodt-Mach such that the punch bit has a distal portion extending from the distal end to a tapered portion as suggested by Kuriki, to provide the benefit of allowing a reduction in diameter of the punch bit when a smaller diameter is desired for a given application.
Ruetz, Nawrodt, Mach, and Kuriki do not expressly teach wherein the distal portion has a constant diameter of no more than 5 millimeters as claimed. However, such a modification would have been an obvious matter of design choice, since changes in size/scale and differences in relative dimensions are considered matters of design choice. See MPEP 2144.04, IV, A and the rejection of Claims 15-16 above.
Regarding Claim 20, Ruetz, Nawrodt, and Mach teach the machine as set forth in Claim 18.
Ruetz, Nawrodt, and Mach do not expressly teach wherein the punch bit has a distal portion extending from the distal end to a tapered portion as claimed. However, a tapered portion would have been obvious in view of Kuriki.
Figures 1A-1B of Kuriki teach a punch bit (2a) that has a distal portion extending from a distal end to a tapered portion (see 2a tapering from top to bottom portions). The tapered shape reduces the diameter for its usage with the punch guide (13) [0042]. Thus, Kuriki evidences a tapered portion helps provide a reduced diameter in situations where a smaller diameter is desirable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the machine taught by Ruetz-Nawrodt-Mach such that the punch bit has a distal portion extending from the distal end to a tapered portion as suggested by Kuriki, to provide the benefit of allowing a reduction in diameter of the punch bit when a smaller diameter is desired for a given application.
Ruetz, Nawrodt, Mach, and Kuriki do not expressly teach wherein the laser-cutting device is configured to form a cut slug with a minimum dimension of 3 millimeters, wherein the punch bit comprises a distal end with a diameter of no more than 2.5 millimeters, and wherein distal portion has a constant diameter of no more than 5 millimeters as claimed.
However, the courts have held various practices to be routine expedients, requiring only ordinary skill in the art. Two of such practices include a change in size and a change in relative dimensions. Limitations relating to size or a mere scaling of processes are not patentably distinguishable over prior art. Additionally, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct (see MPEP 2144.04, IV, A). Regarding the instant application, the recitation of specific numeral size values is considered a mere change in size or scaling. These are not considered patentable distinctions. The dimensions of the minimum dimensions compared to the diameter of the punch bit and diameter of the distal portion is considered a change in relative dimensions. There is no evidence of a change in performance, as the method exemplified in Figures 1a-1b of Nawrodt at least show the punch bit (5) is to be equal to or smaller than the opening created, i.e. if the bit were larger it would not fit [0035]. There is no statement regarding the relative size of the distal portion. As such, the differences are considered merely a matter of design choice.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the machine taught by Ruetz-Nawrodt-Mach such that the laser-cutting device is configured to form a cut slug with a minimum dimension of 3 millimeters, wherein the punch bit comprises a distal end with a diameter of no more than 2.5 millimeters, and wherein distal portion has a constant diameter of no more than 5 millimeters, since changes in size/scale and differences in relative dimensions are considered matters of design choice.
Conclusion
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/ELTON K WONG/Primary Examiner, Art Unit 3745