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 .
DETAILED ACTION
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Election/Restrictions
Applicant’s election without traverse of Species VIII, claims 1-7, 9-10, and 12-15 in the reply filed on 17 December 2025 is acknowledged.
Claims 8 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 December 2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function, or the specification provides more than a single example of the structure, materials, or acts necessary to entirely perform the recited function. Such claim limitation(s) is/are: “means for fastening” and “chamfering means” in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 7 is 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.
Regarding claim 7, the term "advantageously" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1-4, 6, 9, and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nygards (US 5,000,629).
Regarding claim 1, Nygards discloses a device 10 for chamfering a pipe end (top of pipe 46, see figure 6; device 10 may be used to form an inwardly facing chamfer in the pipe end), the device comprising a body part 20, in the body part, means for fastening (center hole, see figures 4 and 6) it to an adapter 12 to be placed in a chuck 14 of a handheld drill 16, at least two formed parts 42 facing forward from the body part (see figure 3), which are adaptable to settle inside a pipe 46 to be chamfered (see figure 6), and on the outer rim of the body part, chamfering means 28 for chamfering an outer edge of an end of the pipe (to form an inwardly facing chamfer in the pipe end).
Regarding claim 2, Nygards discloses wherein the chamfering means 28 are plate parts bent forward (as the direction “forward” is not defined by the claim, the cutting blades 28 are seen to meet this limitation) from a plate-like body blank 20.
Regarding claim 3, Nygards discloses wherein the formed parts 42 are plate parts bent forward from a plate-like body blank 20.
Regarding claim 4, Nygards discloses wherein the chamfering means 28 have a machining edge 32 at a chamfering angle (approximately 45 degrees, see figure 6), and at the end of the chamfering means, outward at an angle (approximately 90 degrees, see figure 6) greater than the chamfering angle, an edge 36.
Regarding claim 6, Nygards discloses wherein the chamfering means 28 are adapted in a rearward slanting position in relation to a direction of rotation (as seen in figure 3).
Regarding claim 9, Nygards discloses wherein the body part 20 has at least three formed parts 42 facing forward (as the direction “forward” is not defined by the claim, the skirts 42 are seen to meet this limitation) from the body part, which are adaptable to settle inside the pipe 46 being chamfered (any number of skirts 42 may be used, see column 3, lines 29-31).
Regarding claim 14, Nygards discloses wherein the means for fastening the body part 20 to an adapter 12 placed in a chuck 14 of a handheld drill 16 comprise a centre hole of the body part (see figures 4 and 6), and in connection with the centre hole a threaded part (bottom portion of shank 12) provided with an inside thread (see figure 4).
Regarding claim 15, Nygards discloses wherein the formed parts 42 are plate parts bent forward from a plate-like body blank 20.
Claims 1, 9-10, and 12-13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Herritz et al. (US Patent Publication 2021/0316370 A1).
Regarding claim 1, Herritz et al. discloses a device 10 for chamfering (outer cutting blades 46 will form a chamfer in the pipe end) a pipe end 60, the device comprising a body part 14, in the body part, means for fastening 38 it to an adapter 12/24 to be placed in a chuck of a handheld drill (see paragraph [0035]), at least two formed parts 44 facing forward from the body part, which are adaptable to settle inside a pipe 26 to be chamfered, and on the outer rim of the body part, chamfering means 46 for chamfering an outer edge of an end of the pipe (outer cutting blades 46 will form a chamfer in the pipe end).
Regarding claim 9, Herritz et al. discloses wherein the body part 14 has at least three formed parts 44 facing forward from the body part, which are adaptable to settle inside the pipe 26 being chamfered.
Regarding claim 10, Herritz et al. discloses wherein the formed parts 44 are so formed that when the device 10 is being used they are adapted to remove burrs from the end of the pipe 26 (see paragraph [0040]).
Regarding claim 12, Herritz et al. discloses wherein the device has chamfering means 46 at two distances, at least, from the centre of rotation (see figure 3), and similarly, formed parts 44 at two distances (see figure 3), at least, inside each chamfering means whereby the device is adapted to be used for chamfering ends of at least two pipes having different diameters (see paragraph [0040]).
Regarding claim 13, Herritz et al. discloses wherein the chamfering means 46 and formed parts 44 are plate parts bent forward (the term “bent” only requires that the parts form an angle relative to the body part) from a plate-like body blank so that the inner chamfering means are of the same structure as the outer formed part (as seen in figure 3).
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 of this title, 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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nygards.
Regarding claim 7, Nygards discloses the invention as claimed, except Nygards does not distinctly disclose wherein the chamfering means are at angle of 30 to 89° in relation to the body part, being silent as to the angle. However, this angle is a result-effective variable because it can be optimized by an operator to provide an optimum chamfered angle to a pipe end. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have selected the chamfering angle to be within the claimed range for the purpose of providing a desired chamfered angle in the pipe end, because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Allowable Subject Matter
Claim 5 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC ANDREW GATES whose telephone number is (571)272-5498. The examiner can normally be reached on M-Th 9-6, Alt Fr 9-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh, can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC A. GATES/Primary Examiner, Art Unit 3722 25 February 2026