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 .
Specification
The abstract, 10/24/25, is objected because it is run-on sentence and worded throughout making it confusion what is actually being disclosed. For examples, lines 1-3 uses 3 times of “wherein” which is unclear what it is. Is the expanded die as same as the three-part die? Does the lower die part in line 8 previously mention?
Examiner suggests to amend the abstract based on the abstract of WO2022/152965 A1.
PNG
media_image1.png
322
910
media_image1.png
Greyscale
The disclosure is objected to because of the following informalities: the summary of the invention, lines 17-34 appear no sentence which is difficultly to understand what it is actually disclosed. Please note that the summary of the invention that should be described in one or more clear, concise sentences or paragraphs. See MPEP. 608.01(d). Also, line 19 “stages” should read –steps--. Appropriate correction is required.
What is “a threshold 15” in pages 6-7 of the specification? Is it a notch, right?
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, line 6 “moving the pipe along a longitudinal direction to a punching position” and lines 19, 21 and the last paragraph “moving the perforated pipe…moving the pipe…the perforated pipe is moved” which were not described in the specification in such a way as to reasonably convey to one skilled in the art that the inventor had possession of how the pipe is moving or how “moving the pipe”. For example, the present disclosure, page 4, lines 35-36 recites “The pipe P, including pipe wall P1, to be perforated is moved in its longitudinal direction to the punching position” without providing any device to allow the pipe movement. How is the pipe moved? It is unclear whether the pipe is moved by manually or mechanically (a mechanical device to move device).
All claims dependent from claim 1 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as being dependent from rejected parent claims, respectively.
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 1-4, 6 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 1, lined 5-6 and later line, “moving the pipe along a longitudinal direction” is unclear. First, it is unclear what that makes the pipe moved. Second, it is unclear what the longitudinal direction refers to.
In claim 1, lines 26-27 “the transfer movement” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear whether the transfer movement “of what” has been mentioned or not.
In claim 1, the step of perforating… “the expanded die” lacks of antecedent basis for the limitation in the claim. This recitation is indefinite because it is unclear whether the expanded die has been mentioned or not. Is that same as the three-part die mentioned in the first paragraph?
Claim 6 “a carriage 10” is unclear whether this carriage refers to the carriage in claim 4 or an additional carriage.
For examination purposes, as best understood, Examiner is interpreting the “issues above” as below and all claims dependent from claim 1 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent from the rejected parent claim.
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.
Claims 1, 3-4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kazumi (JPH11244957 A and Translation) in view of Masanori (JP2012024768 and Translation).
Regarding claim 1, as best understood, Kazumi teaches a method for perforating a wall of a pipe (W) with a punch (Figure 1), the punch comprising a body (5),a cutting punch (11) and a three-part die (31-33, Figure 1) including an upper die part (31), a lower die part (33) and a wedge (32) between the upper and lower die parts (Figure 1), the method comprising the following steps:
moving the pipe along a longitudinal direction of the pipe (Figures 1-2, this is inherent limitation since the pipe is inserted to the die) to a punching position such that the die is inside the pipe;
expanding the die in a direction of movement of the cutting punch by moving the wedge (32) in a first direction of transfer towards a free end of the die to thereby increase a distance between the upper and lower die parts (Para. 10 “ a drive cam 21 for moving a linear spacer 32”);
perforating the wall of the pipe with the cutting punch (11) to thereby form a perforation including rims (a peripheral hole on the pipe) while supporting the wall with an expansion of the die during punching (Figure 2), whereupon the piece punched off from the pipe falls into a hole (31b) in the upper die part (Figure 2),
contracting the die by moving the wedge in a second direction of transfer opposite to the first direction of transfer and away from the free end of the die (see the abstract “A direct-acting spacer 32 which is advancing/retracting in a longitudinal direction is provided in a slidable contact with a lower surface of the die blade 31 and an upper surface of the turntable spacer 33”);
moving the perforated pipe away from the punching position in the longitudinal direction (this is an inherent step while the pipe is completely punched); and
moving the pipe to a position for finishing the rims of the perforation (this is an inherent step. See the discussion above),
wherein the die is supported by a support bushing (51) attached to the body (Figures 1-2),wherein the die is kept out of contact with the inner surface of the pipe surrounding proximate to the die during a transfer movement (of the die) into the pipe (see the discussion in Para. 6), and the die is brought into contact with the inner surface of the pipe during the expansion such that the upper die part is rotated upwards and the lower die part is rotated downwards as a result of the wedge being moved in the first direction of transfer (both the spacer 33 and the die blade 31 are rotated as discussed in Para. 10 “…The rotating spacer 33… a die blade 31 fixed to a die 51, and is turned upward by a spring”),
wherein after punching perforating the wall, the wedge is moved by a first transfer distance in the second direction of transfer (for removing the pipe from the die), which contracts the die by allowing the upper and lower die parts to rotate in an articulated manner towards each other (Middle paragraph of page 4 “After the punching process, …. The linear motion spacer 32 is retracted by the rise of the cam 21, and the rotational spacer 33 is rotated upward by the biasing force of the spring due to the retraction of the linear motion spacer 32, and the die blade 31 and the spacers 32, 33 are rotated.”),
wherein the perforated pipe is moved away from the punching position and wherein the lower part of the die and the wedge are then moved together by a second transfer distance in the second direction of transfer thus opening the exposing a base of the hole in the upper die part, whereupon the piece punched off from the pipe falls out through the base of the hole (this step is inherent since the die is inserted to the pipe as discussed in the abstract “which is arranged below the die blade 31 and inserted in the pipe W together with the die blade 31” that means the whole of the three-part die moved together for next punching processing).
If one argues that the three-part die are not movable in the first and second directions, see Masanori (JP2012024768 and Translation) who shows a three-part die (Figures 13, 14) moved in and out a pipe.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the punch of Kazumi, to have the three-part die movable, as taught by Masanori, in order to allow the punch to be inserted a new pipe for new punching processing. Doing so, the lower part of the die and the wedge are then moved together by a second transfer distance in the second direction.
Regarding claim 3, the modified method of Kazumi teaches all of the limitation as stated above except that the perforation formed in the pipe is an oval hole with a round cross-section.
It would have been an obvious matter of design choice to make the punching hole of whatever form or shape was desired or expedient, including an oval shape. Furthermore, the shape of the hole is merely design choice, since applicant has not disclosed that having any specific construction of the oval shaped hole solve any stated problem or is for any particular purpose. Therefore, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey etal., 149 USPQ 47.
Regarding claim 4, the modification of Kazumi shows a device for perforating a pipe wall (see the discussion in claim 1 above), the device comprising
“a body, a cutting punch arranged to reciprocate with respect to the body and having the shape and size of the desired hole” as discussed in claims 1 and 3 above,
an elongated die (31-33) supported on the body(5) by a support bushing (51) and having a free end, wherein the die comprises an upper die part (31) with a hole (31b) corresponding to the shape and size of the cutting punch, a lower die part (33), and a wedge (32) disposed between the upper and lower die parts (see the discussion in claim 1 above), wherein the wedge can be reciprocated by a first power unit (21) to thereby expand and contract the die (abstract),
wherein the upper die part is attached to the support bushing by a swivel joint (a hole for a bolt 34, Figure 3 of Kazumi) which allows rotating movement of the upper die part (Figure 3 of Kazumi and see the discussion in claim 1 above) in the direction of movement of the cutting punch within a first range of movement allowed by the support bushing (51) and the wedge (32),
wherein the lower die part (33) is attached to a carriage (there is a structure to hold a portion 33d of the die part 33) moved by a second power unit (hydraulic cylinder 250 of Masanori) by a swivel joint (31, Figure 3 of Kazumi) which allows the rotating movement of the lower die part in the direction of movement of the cutting punch (see the discussion in claim 1 above) within a second range of movement allowed by the support bushing and the wedge (see the discussion in claims 1 and 3 above),
wherein the wedge (32) has first and second wedge surfaces (top and bottom) which rotate both die parts (upper and lower die parts) away from each other in an articulated manner to expand the die when the first power unit moves the wedge towards the free end of the die (see the discussion in claim 1 above),
wherein the first power unit is adapted to move the wedge in a contracting direction by a first transfer distance (see the discussion in claim 1 above), and the second power unit is adapted to move the lower die part and the wedge together by a second transfer distance which extends beyond the first transfer distance to the expose a base of the hole of the upper die part (see the modification in claim 1 above).
Regarding claim 6, the modified device of Kazumi shows that the first power unit (21) is a piston type cylinder device (page 5, the 1st paragraph “a cylinder or instead of the drive cam”, the cylinder of which is attached to the carriage (as discussion in claim 4 above) and a piston rod is attached to the wedge (this is inherently limitation because the cylinder has a piston).
Regarding claim 7, the modified device of Kazumi shows that wherein the second power unit (see the modification in claim 1 above, the cylinder 250) is a piston type cylinder device, the cylinder of which is attached to the body and a piston rod is attached to the carriage (there is inherently attached to the carriage for moving the die as seen in Figures 3-4 of Masanori).
Regarding claim 8, the modified device of Kazumi shows all of the limitations as stated above except that on a lower surface of the upper die part contacts the first wedge surface which slopes downwards towards the free end of the die, wherein the upper die part gradually becomes thicker towards the free end of the die, and wherein an upper surface of the lower die part that contacts the second wedge surface slopes upwards, wherein the lower die part gradually becomes thicker towards the free end of the die.
Masanori shows a lower surface of the upper die part contacts the first wedge surface which slopes downwards towards the free end of the die, wherein the upper die part gradually becomes thicker towards the free end of the die, and wherein an upper surface of the lower die part that contacts the second wedge surface slopes upwards, wherein the lower die part gradually becomes thicker towards the free end of the die (see Figures 6b, 7b).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the punch of Kazumi, to have upper and lower die slopes and spacer slopes, as taught by Masanori, in order to allow the three-part die expanded more efficient.
Allowable Subject Matter
Claims 2 and 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, 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: claims 2 and 5 do not anticipate or render obvious the features of a notch of the lower die, which is adapted to rest against the support bushing and to rotate the lower die part upwards or to support the lower die part in an upwards rotated position upon moving said second transfer distance, in combination with the limitations as set forth in the independent claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See the rejections above.
However, if Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
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 NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at (571) 272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NHAT CHIEU Q DO/ Primary Examiner, Art Unit 3724 1/29/2026