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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “means for angular movement” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 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. Such claim limitation(s) is/are: “traction means” in claim 1, “means for lifting/lowering” in claim 3, “means for the angular movement” in claim 6, and “motor means” in claims 7 and 8.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a device for milling”, “a first clamping unit” and “a second clamping unit” in claim 1, “a hydraulic unit” in claim 9, and “an electrical unit” in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. As noticed in page 4, lines 28-29, the traction means 7 has wheels arranged on the sides of the chassis 2, or a combination of wheels and tracks. As noticed in page 6, lines 18-23, the lifting/lowering means 31, 41 have a first linear actuator 32 which is pivoted at a first end thereof to a portion of the first blade 30 and at the other end thereof to the chassis 2, and a second linear actuator 42 which is pivoted at a first end thereof to a portion of the second blade 40 and at the other end thereof to the chassis 2. Each linear actuator 32, 42 may consist, for example, of a hydraulic cylinder connected to the hydraulic unit 9 and appropriately controlled by a control unit. As noticed in page 5, lines 1-2, the motor means 8 is an internal combustion engine; alternatively the motor means may be an electric motor. As noticed in page 4, lines 5-7, both the first clamping unit 21 and the second clamping unit 22 are composed of two pairs of jaws, that are mutually integral and spaced apart, 21a, 21b and 22a, 22b, respectively.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-10 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 limitation “means for the angular movement”, “a device for milling”, “a hydraulic unit” and “an electrical unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In this case, the disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 6 recites the limitation "the angular movement" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the actuation" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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, 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bueno (US 2022/0088890) in view of Abatie (US 10,967,582).
Regarding claim 1, Bueno teaches a self-propelled welding machine (500) for butt welding pipes (abstract), comprising a chassis (502) and a traction means (tracks or wheels; para. 0029; 0060) associated with said chassis (as shown in Fig. 8-9); said traction means allowing a movement of the machine along a direction of travel (para. 0029; 0060); said chassis supporting a welding apparatus (abstract; para. 0067; as shown in Fig. 8-9) comprising a first clamping unit (604, 606) and a second clamping unit (608, 610), adapted to respectively engage a first tubular element and a second tubular element to be joined by welding (para. 0029; 0039; 0065; 0069-0070); a device (620) for milling the ends of said first and second tubular elements (para. 0029; 0040; 0072) and a heating plate (630) for welding said ends being associated with said welding apparatus (para. 0069; 0072).
Bueno fails to disclose wherein said self-propelled welding machine further comprising at least a first blade associated with a first end of said chassis; said first blade being arranged transversely with respect to said direction of travel and being movable with respect to said chassis.
Abatie teaches a self-propelled welding machine comprising at least a first blade (35) associated with a first end of a chassis (15); said first blade being arranged transversely with respect to a direction of travel and being movable with respect to said chassis (as shown in Fig. 2, 4A-4D).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the self-propelled welding machine of Bueno, with Abatie, by providing at least a first blade associated with a first end of said chassis, said first blade being arranged transversely with respect to said direction of travel and being movable with respect to said chassis, to help with lifting/lowering the pipe sections to be welded. POSITA would have known that providing at least a first blade associated with a first end of said chassis, said first blade being arranged transversely with respect to said direction of travel and being movable with respect to said chassis would have a reasonable expectation of success and predictable results such as helping with lifting and lowering of the pipe sections to be welded.
Regarding claim 2, Bueno and Abatie combined teach all the elements of the claimed invention as set forth above in claim 1, except for, comprising a second blade associated with a second end of said chassis and opposite to said first end; said second blade being arranged transversely with respect to said direction of travel and being
movable with respect to said chassis.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a second blade as claimed, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
Regarding claim 3, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 2, comprising means (Abatie; 37 and other elements of 13 besides the blade 35) for lifting/lowering said first and second blades with respect to the ground (Abatie; as shown in Fig. 2 and 4A-4D; Col. 7, lines 13-35; Col. 8, lines 49-51).
Regarding claim 4, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 3, wherein said lifting/lowering means comprise a first linear actuator (Abatie; hydraulic piston/cylinder 37) which is pivoted, at one of its ends, to a portion of said first blade and, at its other end, to said chassis (Abatie; as shown in Fig. 4A-4D; Col. 7, lines 13-35; Col. 8, lines 49-51).
Bueno and Abatie combined fail to disclose a second linear actuator which is pivoted, at one of its ends, to a portion of said second blade and, at its other end, to said chassis.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a second linear actuator as claimed, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
Regarding claim 5, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 3, wherein said lifting/lowering means comprise first arms (Abatie; 32, 34) which, at one end, are integral with said first blade and, at the other end, are articulated to said chassis (as shown in Fig. 2 and 4A-4D).
Bueno and Abatie combined failed to explicitly disclose second arms which, at one end, are integral with said second blade and, at the other end, are articulated to said chassis.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide second arms as claimed, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art.
Regarding claim 6, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 2, comprising a means (Abatie; 37) for the angular movement of said first and second blades with respect to said direction of travel (Abatie; as shown in Fig. 4A-4D).
Regarding claim 7, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 1, wherein said traction means comprises a pair of tracks arranged on opposite sides of said chassis (Bueno; para. 0029; 0060; as shown in Fig. 8 and 9); said tracks being driven independently of each other by a motor means (Bueno; engine 508; para. 0029; 0060; 0067) mounted on said chassis (Bueno; para. 0029; 0060; as shown in Fig. 8 and 9).
Regarding claim 8, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 1, wherein said traction means comprises wheels arranged on opposite sides of said chassis (Bueno; para. 0029; 0060; as shown in Fig. 8 and 9); at least some of said wheels being actuated by a motor means (Bueno; engine 508; para. 0029; 0060; 0067) mounted on said chassis (Bueno; para. 0029; 0060; as shown in Fig. 8 and 9).
Regarding claim 9, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 1, comprising a hydraulic unit mounted on said chassis for the actuation of hydraulic components equipped to said self-propelled welding machine (Bueno; para. 0008; 0029; 0033; 0060-0061; 0063; 0065; 0068).
Regarding claim 10, Bueno and Abatie combined teach the self-propelled welding machine, according to claim 1, comprising an electrical unit mounted on said chassis (Bueno; para. 0029; 0061; 0063; 0065; 0067); said electrical unit powering electrical components equipped to said self-propelled welding machine (Bueno; para. 0029; 0061; 0063; 0065; 0067).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. McElroy (US 5,814,182) is considered relevant prior art in the field of self-propelled welding machines, as shown in Fig. 1 and abstract, with a chassis (C) and traction means (T), with clamping units (J) and a device for milling (F) (as shown in Fig. 1-5), but does not disclose at least a first blade associated with a first end of said chassis; said first blade being arranged transversely with respect to said direction of travel and being movable with respect to said chassis.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBA T ROSARIO-APONTE whose telephone number is (571)272-9325. The examiner can normally be reached M to F; 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Crabb can be reached at 571-270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALBA T ROSARIO-APONTE/Examiner, Art Unit 3761
09/01/2026
/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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