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 .
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,” and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Such claim limitation(s) is/are: “insulation means” in claim 1, “containment element” in claim 5, “hinge means” in claim 8 and “elastic return means” in claim 9.
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.
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 Objections
Claim 5 is objected to because of the following informalities: change “A container for heating plates” to “[[A]] The container for heating plates”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: replace “characterized in that” with “wherein” or other terms suitable for US practice. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 2-5, 11, and 12 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.
Claims 2, 3, 5, and 12 recite an element being “associated” with another element. For example, claim 2 recites “said insulation means is associated with an internal surface of said walls”, and claim 3 recites “said insulation means is associated with an outer surface of said walls.” It is not clear how to interpret an element being “associated” with another element. In other words, it is not clear what type of association is meant to be between the two elements. Moreover, claim 12 recites “associable with” and it is not clear what constitutes two elements being associable with each other. In the Broadest Reasonable Interpretation (BRI), all of the elements of the device 1 shown in Fig. 1-5 are “associated” with each other, and ““associable” with each other, by virtue of being parts of device 1. In other words, their association is that they are directly or indirectly connected to each other and as a unit perform the functions that are described in the disclosure.
The term “substantially” in claim 4 is a relative term which renders the claim indefinite. The term “substantially” 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. In the instant case, it is not clear how similar the reproduced negative outer shape of said heating plate should be in order to be considered substantial.
Claim 11 recites “it is integral.” It is not clear what “it” is referring to.
Claim 12 recites “An apparatus for butt welding pipes, according to claim 1,” however claim 1 does not recite an apparatus for butt welding pipes, instead it recites a container. Moreover, claim 12, which depends from claim 1, recites at least one container. Claim 1 also recites a container. It is not clear if the container of claim 12 is different from that of claim 1. One way to obviate this rejection is to recite “An apparatus for butt welding pipes, associated or associable with said welding apparatus; said welding apparatus being characterized in that it comprises at least one container according to claim 1 for heating plates for the butt welding of pipes.”
Any and all claims rejected herein under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, if rejected with art below under sections 35 U.S.C. 102 and/or 35 U.S.C. 103, are rejected as best understood.
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 and 6-11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Dietrich (EP 2 829 382).
With regard to claim 1, Dietrich discloses a container (135, 136, see Fig. 2) for heating plates (129) for butt welding pipes ([0005]), comprising one or more walls forming at least one receptacle for containing a heating plate (see [0038] disclosing that “in the waiting position, the insulating strips 137, 138 are pressed against the two side surfaces of the heating element 129 by applying appropriate pressure to the pneumatic cylinders 139, 140 in order to thermally insulate them”. Also see Fig. 2); an insulation means surrounding said receptacle and adapted to thermally insulate said receptacle from the surrounding environment (137, 138); said one or more walls having at least one opening allowing the insertion/extraction of said heating plate into/from said receptacle (Fig. 2, [0038]).
With regard to claim 2, Dietrich further discloses that said insulation means is associated with an internal surface of said walls (Fig. 2).
With regard to claim 3, Dietrich further discloses that said insulation means is associated with an outer surface of said walls (Fig. 2. See the 112(b) rejection regarding “associated” and note that in Dietrich, said insulation means is associated with an outer surface of said walls by virtue of them being connected to each other and as a unit performing the functions disclosed by Dietrich).
With regard to claim 4, Dietrich further discloses that said insulation means comprises panels made of solid insulating material (137, 138) which substantially reproduce a negative outer shape of said heating plate and cover said walls (Fig. 2).
With regard to claim 6, Dietrich further discloses at least two portions (see 135 and 136, or 137 and 138, or their combination in Fig. 2) forming said receptacle and said opening.
With regard to claim 7, Dietrich further discloses that at least one of said two portions is movable between an open configuration, in which said portions are mutually spaced apart, and a closed configuration, in which said portions are closed onto each other (see Fig. 2 and [0038]).
With regard to claim 8, Dietrich further discloses hinge means (the hinge means are the pneumatic cylinders 139, 140. See the 112(f) above which allows the equivalents of the means) adapted to allow the rotation of at least one of said two portions with respect to the other portion (Fig. 2).
It is noted that the phrase “to allow the rotation of at least one of said two portions with respect to the other portion” is being treated as a statement of the intended use.
With regard to claim 9, Dietrich further discloses an elastic return means (the elastic return means are the pneumatic cylinders 139, 140. See the 112(f) above which allows the equivalents of the means) which interacts with at least one of said two portions, facilitating the transition from said open configuration to said closed configuration and vice versa (Fig. 2).
With regard to claim 10, Dietrich further discloses a clamping device which is switchable between a locking mode, in which transition from said closed configuration to said open configuration of said container is prevented, and a release mode, in which the transition from said closed configuration to said open configuration of said container and vice versa is allowed (see [0033] and [0038] disclosing 139 and 140 are used to switch between a locked mode where the pneumatic system locks movement and a release mode where the pneumatic system moves).
With regard to claim 11, Dietrich further discloses that it is integral with other containers and/or supports (each of 102, 103, 104, 105, 106, 107, and 108 is interpreted as support which are integral with the rest of the device shown in Fig. 2 such as 135 and 136).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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 CFR 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dietrich (EP 2 829 382).
With regard to claim 5:
Dietrich discloses the container of claim 1, as set forth above.
Dietrich does not appear to explicitly disclose that said insulation means comprises loose insulating material confined between said walls and containment elements associated therewith.
However, a careful examination of the specification reveals no criticality for the insulation means comprising loose insulating material confined between said walls and containment elements associated therewith, nor any reason as to why the container of applicant with the loose insulating material confined between said walls and containment elements associated therewith would operate any different than the container of Dietrich, and Applicant has not disclosed that the insulating material being loose and confined between said walls and containment elements associated therewith provides an advantage, is used for a particular purpose, or solves a stated problem. On the contrary, the specification discloses that “according to alternative embodiments, not shown in the figures, the insulation means that insulate the receptacle 3 is arranged on the outer surface of the walls 2 or is for example constituted by a loose insulating material, confined between containment elements.” ([0041]). Hence the insulating material being loose is considered to be a design choice by the applicant. One of ordinary skill in the art, furthermore, would have expected Dietrich and Applicant’s invention to perform equally well, because both would perform the same function of insulating.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine the insulating material being loose as claimed with container of Dietrich in order to achieve a desired dimension or configuration, as they are a matter of design choice. Such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art.
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Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dietrich (EP 2 829 382) in view of Lee Nam (KR 101 238 813).
With regard to claim 12:
Dietrich discloses an apparatus for butt welding pipes (see [0027] disclosing “Figure 2 shows a butt welding machine 101”) comprising a first clamp assembly and a second clamp assembly (115, 116, 119, 120), which can engage respectively a first tubular element and a second tubular element to be joined by welding ([0005], [0029], [0030]); a heating plate (129) for welding said ends being associated or associable with said welding apparatus; said welding apparatus being characterized in that it comprises at least one container for heating plates for the butt welding of pipes (Fig. 2).
Dietrich does not appear to explicitly disclose a device for milling the ends of said first and second tubular elements.
However, Lee Nam teaches a device for milling the ends of first and second tubular elements (110)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, namely adding a device for milling the ends of said first and second tubular elements, to yield predictable results of butt welding pipes.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached form PTO-892 for pertinent prior art disclosing similar containers such as US 20150156821.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney D Heinle can be reached at (571) 270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BEHNOUSH HAGHIGHIAN/
Examiner
Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745