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 .
Specification
Regarding the specification amendment to correct the foreign priority claim to refer to a “European” application and not a “British” application, this amendment is accepted.
However, Applicant’s arguments (Reply at 7-8) regarding the amended statement of incorporation misses the mark because Applicant confuses rules pertaining to priority claims with rules pertaining to incorporation by reference statements and new matter. The objection is not to the priority claim, but rather only to the added statement of incorporation by reference to International Application No. PCT/EP2022/059460 and (now corrected) European Application No. 21167665.5 (04/23/2026 Amendment at 2; 10/09/2023 Preliminary Amendment at 2).
As stated previously, this statement of incorporation is ineffective because it was added on the date of entry into the U.S. national phase, which is after the filing date of this application. The filing date of this U.S. national stage application is the filing date of the associated international application, which is 05/08/2022. MPEP § 1893.03(b). Thus, the specification amendment of 10/09/2023 (and 04/23/2026) is new matter. MPEP § 608.01(p)(I)(B). Applicant should note that the International Application as filed (see WO 2022214666 A1) does not contain a statement of incorporation of the European Application. And regardless of the fact that the International Application is unavailable to be added to a priority claim until it is filed (Reply at 7-8), a statement of incorporation referring to the International Application when amended at the U.S. national stage entry is nevertheless new matter.
Examiner suggests amending the “RELATED APPLICATION” paragraph (see 04/23/2026 Amendment at 2) to remove the phrase “the content of each of which is hereby incorporated by reference in its entirety.” Applicant is required to cancel the new matter in the reply to this Office action.
Claim Rejections – 35 U.S.C. § 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 8 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.
Claim 8 recites the limitation “wherein turning the structural member comprises gripping the structural member using the grippers of the plurality of member turning devices, rotating the grippers using the rotation devices of the plurality of member turning devices, and translating the rotation devices using the actuators of the plurality of member turning devices.” This claim is indefinite because it is a single claim that claims both an apparatus and method steps of using the apparatus. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (“it is unclear whether infringement...occurs when one creates a system that allows the user to change the predicted transaction information...or...when the user actually uses the input means to change transaction information”); MPEP § 2173.05(p).
Claim Rejections – 35 U.S.C. § 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.
Lin
Claims 1-4, 6-8, and 10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 5904347 A (“Lin”).
Regarding claim 1, Lin discloses a system for handling a structural member of a blade of a wind turbine (Figs. 1-6, system as shown (Fig. 1) is capable of handling a structural member as recited; Examiner notes that the “structural member” is not positively recited nor defined in terms of geometry (other than having a first and second side as recited below); Examiner also notes that this limitation includes a recitation of intended use. 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. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)),
comprising:
a member support configured for supporting the structural member on a member support surface, the member support being configured to be mounted to a base (Figs. 1-6, member support 1 (including both supports 1 as shown in Fig. 1) supports the structural member on the member support surface of cutout 23 (the inner circumferential surface of cutout 23), member support 1 is capable of being mounted to a base (e.g., placed on a floor)),
wherein the structural member includes a first side and a second side spaced from the first side (Fig. 1, structural member as shown has a first side (e.g., a bottom side) and a second side (e.g., a top side) spaced from the first side);
and a plurality of member turning devices positioned along a longitudinal axis of the member support, the plurality of member turning devices being connected to the member support and configured for turning the structural member from a first orientation to a second orientation (Figs. 1-6, member turning devices (including elements 2, 12) positioned along a longitudinal axis of the member support 1 (including both supports 1 as shown in Fig. 1) and are connected to member support 1 and capable of the recited turning function),
wherein, in the first orientation, the first side of the structural member is in contact with the member support surface, and, in the second orientation, the second side of the structural member is in contact with the member support surface (Figs. 1-6, when in the first orientation (e.g., as shown in Fig. 1), the bottom side of the structural member contacts the member support surface of cutout 23 (due to the clamping force of elements 2 and/or gravity), and when in the second orientation (e.g., rotated 180 degrees from what is shown in Fig. 1), the top side of the structural member contacts the member support surface of cutout 23 (due to the clamping force of elements 2 and/or gravity); Examiner interprets this limitation to require direct contact between the recited side of the structural member and the member support surface (as opposed to indirect contact with an intervening structure)).
Regarding claim 2, Lin discloses the system of claim 1 as applied above and further discloses wherein each member turning device of the plurality of member turning devices comprises a gripper configured for gripping the structural member, and a rotation device configured for rotating the gripper (Figs. 1-6, the turning devices include grippers 2 capable of gripping the structural member, and rotation devices 12 capable of rotating the grippers).
Regarding claim 3, Lin discloses the system of claim 2 as applied above and further discloses wherein the rotation device is configured for rotating the gripper about a rotation axis of the rotation device, the rotation axis being parallel to the longitudinal axis of the member support (Figs. 1-6, rotation device 12 is capable of rotating the grippers 2 about a rotation axis of the rotation device 12 (axis shown in Fig. 2), the axis is parallel to the longitudinal axis of the member support 1).
Regarding claim 4, Lin discloses the system of claim 2 as applied above and further discloses wherein each member turning device comprises an actuator connected to the member support, the actuator being configured for translating the rotation device (Figs. 1-6, actuator (handle) 24 connected to support 1 and for rotating the rotation devices 12; 2:11-12).
Regarding claim 6, Lin discloses the system of claim 2 as applied above and further discloses wherein the rotation devices of the plurality of member turning devices are configured for rotating the grippers of the plurality of member turning devices in synchronized motion; and/or wherein the grippers of the plurality of member turning devices are configured to grip the structural member in synchronized motion (Figs. 1-6, the rotation devices 12 of the turning devices (e.g., the two turning devices shown in Fig. 1) rotate the grippers 2 in a synchronized motion (e.g., when the two turning devices are connected by the structural member, and/or each of the two grippers 2 of a single turning device are rotated in a synchronized motion by themselves)).
Regarding claim 7, Lin discloses the system of claim 4 as applied above and further discloses wherein the actuators of the plurality of member turning devices are configured for translating the rotation devices of the plurality of member turning devices in synchronized motion (Figs. 1-6, actuators 24 are capable of rotating the rotation devices 12 of the turning devices (e.g., the two turning devices shown in Fig. 1) in a synchronized motion (e.g., when the two turning devices are connected by the structural member, and a force is applied to the actuators 24 (e.g., by a human)).
Regarding claim 8, Lin discloses the system of claim 4 as applied above and further discloses wherein turning the structural member comprises gripping the structural member using the grippers of the plurality of member turning devices, rotating the grippers using the rotation devices of the plurality of member turning devices, and translating the rotation devices using the actuators of the plurality of member turning devices (Figs. 1-6, the Lin system is capable of performing the recited operations on a structural member, using grippers 2, rotation devices 12, and actuators 24).
Regarding claim 10, Lin discloses the system of claim 4 as applied above and further discloses wherein the gripper comprises a first gripper arm and a second gripper arm, the gripper being configured to grip the structural member by clamping the structural member between the first gripper arm and the second gripper arm (Figs. 1-6, first and second gripper arms (elements 2, upper half and lower half, are capable of the recited function).
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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.
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.
Lin in view of Diaz De Corcuera
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over US 5904347 A (“Lin”) in view of US 20120032125 A1 (“Diaz De Corcuera”).
Lin pertains to a rotatable workholder (Abstr.; Figs. 1-6). Diaz De Corcuera pertains to a device for handling a wind turbine rotor blade (Abstr.; Figs. 1-21). These references are in the same field of endeavor.
Regarding claim 9, Lin discloses the system of claim 1 as applied above and further discloses wherein the plurality of member turning devices is configured for transferring the structural member between the member support surface of the member support and a member transport device positioned parallel to the longitudinal axis of the member support (Figs. 1-6, the turning devices are capable of transferring (by opening grippers 2 and/or rotating) the structural member between the member support surface (the inner circumferential surface of cutout 23) and a member transport device (e.g., a crane with cables attached to the structural member), which is positioned parallel to the longitudinal axis; Examiner notes that the “member transport device” is not positively recited nor defined in terms of any structure or geometry; Examiner also notes that this limitation includes a recitation of intended use. 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. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II); Examiner also notes that the term “for transferring” is very broad).
To the extent Lin does not disclose this limitation, the Lin/Diaz De Corcuera combination makes obvious this claim.
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Diaz De Corcuera with Lin by using a crane, positioned parallel to the longitudinal axis of the member support (Fig. 7, element 125 is parallel to the longitudinal axis), to be the “member transport device” with cables 11 attached to the structural member during the transferring process. This would have been obvious to a person of ordinary skill in the art because the use of a crane when transferring heavy, bulky objects is well known and commonly used; it would be an obvious choice of a transport device in combination with Lin due to Lin’s configuration which requires a device to lift the structural member up and out of the grippers 2.
Lin
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over US 5904347 A (“Lin”).
Regarding claim 11, Lin discloses the system of claim 1 as applied above and further discloses wherein an axial distance along the longitudinal axis of the member support between two adjacent member turning devices of the plurality of member turning devices is maximum 20 meters (Fig. 1, the distance between the two turning devices (including elements 2, 12) is less than 20 meters based on the size of the handles 15 and 24 that are designed for a human hand).
To the extent Lin does not disclose this limitation, Lin makes obvious this claim.
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to space out the member supports 1 of Lin to a maximum of 20 meter, depending on the construction and nature of the workpiece being supported. A person of ordinary skill would recognize the need to give extra support to certain workpieces (e.g., fragile but heavy ones) including the consideration of not spacing out the member supports greater than 20 meters from each other (see US 6698741 B1 (“Dunn”) 1:9--32, “A problem with using this type of fixture is that the center portion of the workpiece is unsupported during the machining operation. As a result, the workpiece may be deflected downward from the force of the machining operation applied to the top of the workpiece. Such deflection may reduce the rate of production, make it difficult to maintaining close tolerances, and increase tool wear.”). Furthermore, absent a teaching as to criticality of the 20 meters spacing as claimed, this particular arrangement is deemed to have been known by those skilled in the art since the specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Allowable Subject Matter
Claim 5 is 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.
As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
The following is Examiner’s statement of reasons for allowance:
Regarding claim 5, Lin discloses the system of claim 4 as applied above. Lin does not disclose the limitation “wherein the actuator is configured for translating the rotation device along a latitudinal axis of the member support, the latitudinal axis being perpendicular to the longitudinal axis of the member support.”
Based on the disclosed device of Lin, it would appear nonobvious to modify Lin to accomplish the recited function of claim 5, specifically “translating the rotation device along a latitudinal axis”, where this latitudinal axis is perpendicular to the recited longitudinal axis. Further, the prior art of record does not appear to disclose or make obvious this limitation of claim 5 in combination with its parent claims 1, 2, and 4. In view of the prior art of record and its deficiencies, Applicant’s invention is novel, non-obvious, and allowable as claimed.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 1-15 are pending. Claims 12-15 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 1-4 and 6-11 are rejected. Claim 5 is objected to.
Specification – The objection to the specification is sustained in part (see discussion above).
Claims – The objections to claim 1 is withdrawn in view of Applicant’s amendments. In light of Applicant’s claim amendments, the § 112(b) rejection of claims 3, 5, and 9 is hereby withdrawn.
Applicant is cautioned that claim amendments must include a correct status identifier for each claim and accurate markings to show the changes from the previous claim set. 37 C.F.R. § 1.121(c); MPEP § 714(II)(C). Although claims 6-8 and 10 are identified as “Currently Amended,” these claims have no markings and they appear to be identical to those presented in the last claim set.
Response to Arguments
Applicant’s arguments with respect to amended claim 1 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 arguments.
Applicant does not present any further arguments concerning the remaining claims.
Conclusion
The prior art made of record on Form PTO-892 and not relied upon is considered pertinent to Applicant’s disclosure because the references pertain to workholders configured to rotate large, bulky objects to different positions to perform abrading, machining, or similar operations, and related workholder structures.
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee pursuant to 37 C.F.R. § 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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, MONICA S CARTER can be reached at (571)272-4475. 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.
/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
Prosecution Insights