DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 2, 4 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 pre-AIA the applicant regards as the invention.
Claim 2 recites the limitation “similar”. It is unclear what the metes and bounds of the limitation “similar” is. The word “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance:
Claim 4 recites the broad limitation “a pressing device”, and the claim also recites “in particular, a hydraulic or mechanical pressing device” which is narrower statement of the range/ limitation.
All dependent claims of above-mentioned claims inherit all of the limitations of the above-mentioned claims. Thus, the claims are likewise rejected under 35 U.S.C. 112(b) as being indefinite.
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) 1-4 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Walter (EP 1201371).
Regarding claim 1, Walter discloses a pressing tool (Fig. 1-7- embodiment shown in Fig. 7) for pressing a press fitting by means of a press ring (intended use: capable of being used with a press fitting by means of a press ring as claimed), comprising two pressing jaws (4a,b) which can be moved towards each other from an open position (Fig. 2) to a closed position (Fig. 3) for pressing, wherein the pressing jaws comprise a connecting element (8) for connection to respective receiving elements of the press ring (intended use: capable of being used for connection to respective receiving elements of press ring. Also shown in Figs. 1-7), so that the press ring can be moved from an open position to a closed position by the movement of the pressing jaws for pressing the press fitting (intended use: it is be capable of performing the function), wherein the minimum distance of the connecting elements in the open position is greater than the maximum distance of the receiving elements of the press ring in the open position (intended use: it is be capable of performing the function when used with a particular press ring that meets the requirement), wherein the minimum distance of the connecting elements in the closed position corresponds to a minimum distance of the receiving elements of the press ring in the closed position and wherein the minimum distance of the connecting elements in the open position is smaller than the maximum distance of the receiving elements of a second press ring in the open position (intended use: it is be capable of performing the function when used with a particular press ring that meets the requirement), so that a connection with the second press ring is prevented and/or wherein the minimum distance of the connecting elements in the closed position is greater than the minimum distance of the receiving elements of a third press ring in the open position, so that pressing with the third press ring is prevented (intended use: it is be capable of performing the function when used with a particular press ring that meets the requirement).
A pressing tool (Fig. 1-7- embodiment shown in Fig. 7) for pressing a press fitting by means of a first press ring[[,]] (intended use: capable of being used with a press fitting by means of a press ring as claimed. Examiner notes that the press ring is not required as a structure of a pressing tool) comprising; two pressing jaws (4a,b) which can be moved towards each other from an open position (Fig. 2) to a closed position (Fig. 3) for pressing, wherein each of the pressing jaws of the pressing tool comprise a connecting element (8) for connection to a respective receiving element (intended use: it is be capable of performing the function when used with a particular press ring that meets the requirement. structure not required.) of the first press ring so as to form a set of connecting elements that permit the pressing tool to operatively engage a set of respective receiving elements on the first pressing ring so as to enable the first press ring [[can]]to be moved from an open position to a closed position by the movement of the pressing jaws of the pressing tool for pressing the press fitting (intended use: it is be capable of performing the function), wherein [[the]]a minimum distance of the set of connecting elements of the pressing tool in the open position is greater than a maximum distance of the set of receiving elements of the first press ring in the open position, wherein the minimum distance of the set of connecting elements of the pressing tool in the closed position corresponds to a minimum distance of the set of receiving elements of the first press ring in the closed position,[[ and]] wherein the minimum distance of the set of connecting elements of the pressing tool in the open position is smaller than [[the]]a maximum distance of [[the]]a set of receiving elements of a second press ring in [[the]]an open position, such that the physical difference between these two distances prevents the pressing tool and the second press ring from forming a connection [[with]]between the pressing tool and the second press ring, and wherein the minimum distance of the set of connecting elements of the pressing tool in the open position is smaller than a maximum distance of a set of receiving elements of a third press ring in an open position, such that the physical difference between these two distances prevents the pressing tool and the third press ring from forming a connection between the pressing tool and the third press ring. (intended use: it is be capable of performing the function when used with a particular press ring that meets the requirement. Examiner notes that press ring is not a structure of a pressing tool.).
Regarding claim 2, Walter discloses the pressing tool according to claim 1, wherein the connecting elements are spherical segments (Fig. 7: 8) or segments similar to spheres.
Regarding claim 3, Walter discloses the pressing tool according to claim 1, wherein the connecting elements are undercuts (embodiment shown in Fig. 6: 4a, 4b where it meets 8) for connection to connecting bolts of the press ring.
Regarding claim 4, Walter discloses the pressing tool according to claim 1, wherein the pressing tool can be connected to a pressing device (see Fig. 6: device that presses from bottom with an arrow), in particular a hydraulic or mechanical pressing device, for moving the pressing jaws.
Response to Arguments
Applicant's arguments filed 11/03/2025 have been fully considered but they are not persuasive.
Applicant argues that prior art fails to disclose or render obvious the three distinct physical relationships between the claimed pressing tool and that of the first and second and third pressing rings.
Examiner respectfully disagrees. Examiner notes that the pressing rings are not part of the structure of the pressing tool but rather an intended use. For example, when a mechanical drill is claimed, a bolt or a nut is not part of the drill rather it is just an intended use. So when a pressing ring of particular structure is used, it would read on the claim limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
At least WO 2022111753, DE 202020102724, EP 3563945, EP 1839814 teach similar pressing tool of claim 1.
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 BOBBY YEONJIN KIM whose telephone number is (571)272-1866. The examiner can normally be reached M-F 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOBBY YEONJIN KIM/ Examiner, Art Unit 3725
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